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Jharkhand High Court
Mongia Steel Limited vs Saluja Steel And Power Private Limited on 17 July, 2025
Bench: Sujit Narayan Prasad, Rajesh Kumar
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IN THE HIGH COURT OF JHARKHAND AT RANCHI
Commercial Appeal No.08 of 2023
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Mongia Steel Limited, a company within the meaning of the
Companies Act, 2013 having its registered office at Room
No.226, Kamalalaya Centre, 156A, Lenin Sarani, Kolkata-
700013, West Bengal through its Director Gunwant Singh
Mongia alias Gunwant Singh Saluja, Aged about 59 years,
son of Late Daljeet Singh Saluja, resident of Saluja House,
Netaji Chowk, Bhandaridih, P.O. + P.S. Giridih, District:
Giridih-815301. ... ... Appellant/Plaintiff
Versus
Saluja Steel and Power Private Limited, a company within the
meaning of the Companies Act, 2013 having its registered
office at Netaji Chowk, Bhandaridih, P.O. + P.S. Giridih,
District: Giridih-815301, Jharkhand.
... ... Respondent/Defendant
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CORAM: HON'BLE MR. JUSTICE SUJIT NARAYAN PRASAD
HON'BLE MR. JUSTICE RAJESH KUMAR
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For the Appellant : Mr. Debnath Ghosh, Sr. Advocate
: Mr. Arijit Bardhan, Advocate
: Mr. S. Dasgupta, Advocate
: Mr. Piyush Poddar, Advocate
: Mr. Manav Poddar, Advocate
For the Respondent : Mr. Prashant Pallav, Advocate
: Mr. Amit Sinha, Advocate
: Mr. Parth Jalan, Advocate
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C.A.V. on 02.07.2025 Pronounced on 17/07/2025
Per Sujit Narayan Prasad, J.
1. At the outset, it requires to refer herein that the suit
was earlier heard by this Court.
2. This Court, vide order dated 19.07.2024, had
dismissed the suit by refusing to condone the delay of 356
days.
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3. The appellant has preferred an appeal before the
Hon’ble Apex Court being Civil Appeal No.5602 of 2025 and
thereby the matter has again been listed before this Court.
4. This Court has gone through the order passed by the
Hon’ble Apex Court wherein it has been observed that the
issue requires consideration on merit.
5. Accordingly, we have heard learned counsel for the
parties on merit.
Prayer
6. The instant appeal has been filed under Section 13
of the Commercial Courts Act, 2015 directed against the
order dated 15.03.2022 passed in Commercial Case No.63 of
2020 by the learned Presiding officer, Commercial Court,
Ranchi whereby and whereunder the plaint pertaining to
Commercial Case No.63 of 2020 has been rejected in exercise
of power conferred under Order VII Rule 11 of the Code of
Civil Procedure, 1908.
Factual Matrix
7. The brief facts of the case as per the pleading made
in the memo of appeal also having been incorporated in the
impugned order needs to be referred herein :-
The Appellant is engaged in the business of
manufacturing and/or marketing and/or selling of various
metallic and/or non-metallic materials, including TMT Bars,
CTD Bars, Joist, Channels, M.S. Rounds, M.S. Flats, M.S.
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Wires, Common Metals, Apparatus for Lighting, Heating,
Steam Generating, Cooking, Refrigerating, Drying,
Ventilating, Water Supply and Sanitary purpose, Pipes and
tubes of Metal, etc.
The Appellant was incorporated on March 10, 1995
under the name and style Mongia Hi-Tech Private Limited.
At the time when the Appellant was incorporated, Mr.
Gunwant Singh Mongia alias Gunwant Singh Saluja, Mr.
Amarjeet Singh Saluja and Mrs. Manmeet Kaur were its first
shareholders and Directors. Mr. Gunwant Singh Mongia and
Mr. Amarjeet Singh Saluja are brothers.
Since the incorporation of the Appellant Mr.
Gunwant Singh Mongia has been managing, running and
looking after day to day affairs of the Appellant. The name of
the Appellant subsequently sometime on or about September
7, 2010 was changed to Mongia Steel Private Limited and
thereafter sometime on or about January 31, 2011 to Mongia
Steel Limited, its present name.
The Respondent was incorporated sometime on or
about July 26, 2004 with Amarjeet Singh Saluja, Taranjeet
Singh Saluja, Satwinder Singh Saluja as its first
shareholders and Directors. Though the Respondent was
incorporated in July, 2004 but the Respondent was not into
the business of manufacturing of TMT Bars prior to 2014.
The Respondent was, however, marketing and/or trading
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TMT Bars using the Trade Mark “SALUJA” prior to 2014
without any device and/or photo of “Sardarji”.
The Respondent with the intention of grabbing the
readily available market created by the Appellant started
projecting itself as sister concern of the Appellant to the
members of trade and public. The Respondent applied for
registration of the mark “SALUJA (Label)”, with the Registrar
of Trade Marks on or about March 14, 2013 vide Trade Mark
Application No.2496055. Inasmuch as the mark “SALUJA
(Label)” which was being used by the Respondent was
different from the numerous marks and artistic works used
and owned by the Appellant, the Appellant had absolutely no
objection in the Respondent using the mark “SALUJA
(Label)” while marketing its products.
The Appellant started its business of manufacturing
and/or marketing of various TMT Bars, CTD Bars, Joist
Channels, M.S. Rounds etc. in the year 1995. The Appellant
immediately on its incorporation coined and adopted
numerous marks. Prominent and essential feature of all the
marks adopted by the Appellant in the year 1995 was device
of photograph of its Director Mr. Gunwant Singh Mongia and
the word “MONGIA”. The Appellant at the same time coined,
adopted and devised numerous marks, all comprising of
device of prominent photo of its Director, Mr. Gunwant Singh
Mongia, in different style and manner along with the word
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“MONGIA” written in numerous stylized forms and/or in
different languages. The Appellant has from time to time
applied for and obtained registration over its numerous
marks and some of the marks of the Appellant are pending
registration before the Trade Marks Registry. The Appellant
ever since its incorporation has been continuously,
uninterruptedly, extensively and exclusively been using its
marks.
All the labels coined and adopted by the Appellant
are original artistic work within the meaning of the
Copyrights Act, 1957 and the Appellant is the owner of and
has copyrights over all its artistic work. The Appellant being
owner of its artistic works has applied for and obtained
Copyright registration over its numerous artistic works.
The Appellant has spent huge amount of money for
advertisement and/or publicity of its marks. The members
of trade and public identify the trade mark/trade name
“MONGIA” and/or Device of Sardarji (Label) with Appellant
alone and none else. In fact the products of the Appellant is
referred to as “Sardar Chhaap Chhar” and/or “Sardarji’s
Chhar” by the members of the trade and/or buying public.
The Appellant ever since having coined and adopted,
Inter alia, its marks “MONGIA with Device of Sardarji (Label)”
have used the same continuously, extensively, openly,
uninterruptedly and to the exclusion of others. The
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Respondent and its promoters especially Mr. Amarjeet Singh
Saluja have all throughout being aware of such fact.
The getup and trade dress which the products of the
Appellant bear constitute a mark within the meaning of the
The Appellant in the year 1995 also introduced
tagline “Nirmaan ka Majjboot Aadhaar” along with the mark
“MONGIA with (Device of Sardarji)” and has been using such
tagline continuously and such tagline has also become very
popular amongst the members of the trade and buying
public and the same is identified with the Appellant alone.
Appellant has advertised the said marks in various
leading newspapers in India like Dainik Jagran, Prabhat
Khabar, Hindustan etc.
By reason of the aforesaid, the Appellant’s products
sold, inter alia, under the said marks have captured the
imagination of the trade and public at large. The products
manufactured and/or marketed under the said marks are
exclusively identified with the Appellant and none else. The
Appellant has huge market share in the line of business in
which the Appellant carries and conducts its business.
The Appellant has always been extremely vigilant and
proactive in protecting its Intellectual Property rights and is
always committed to maintain the high standard of quality
of its products. Therefore, the said marks of the Appellant
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being extremely distinctive, invented, original and coined
mark, is entitled to the highest degree of protection under
the Intellectual Property law as also common law.
It is the case of the appellant that Mr. Amarjeet Singh
Saluja and his sons Mr. Taranjeet Singh Saluja and
Satvinder Singh Saluja, with the purpose of completely
severing all ties with the Appellant and/or Mr.Gunwant
Singh Mongia formed and incorporated the Respondent
sometime on or about July 26, 2004. The main object of the
Respondent was to manufacture Sponge Iron, however, no
such business was started by the Respondent prior to the
year 2014. In this connection it will not be out of place to
mention here that at the time when the Respondent was
formed and incorporated, Mr. Amarjeet Singh Saluja and his
wife Smt. Manmeet Kaur continued to be the Directors and
shareholders of the Appellant and resigned from the
Appellant sometime in the year 2006. Mr. Amarjeet Singh
Saluja and Smt. Manmeet Kaur also sold and transferred
their entire shareholdings of and in the Appellant company
in favour, inter alia, of Mr. Gunwant Singh Mongia.
The Appellant alone is entitled to use the mark
“Device of Sardarji” in respect of TMT Bars and Iron and Steel
Products and use of any mark which is similar and/or
identical and/or deceptively similar to the mark “Device of
Sardarji” belonging to the Appellant tantamount to
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infringement of Trade Mark, Copyright and also passing off
by the anyone using such mark and/or deceptively similar
mark and the same would also amount to violation of the
common law right of the Appellant.
The Respondent in the meantime sometime on or
about June 27, 2014 filed numerous applications for
registration of marks “SALUJA GOLD with Device of Sardarji”
along with a tag line “Majboot Nirmaan Ki Guarantee” with
the Registrar of Trade Marks alleging user of such marks
since July 26, 2004. All such marks applied for registration
by the Respondent carried device of photographs of Sardarji
as its essential and prominent feature and in identical
and/or similar get up as that of the Appellant’s mark.
The overall getup of the alleged marks applied for
registration by the Respondent gave an immediate
impression that the Respondent has imitated and adopted
the style of the device of Sardarji (label) in the same manner
and/or style as being used by the Appellant, which the
Appellant had coined and adopted sometime in the year
1995 and has been using ever since.
Such slavish imitation by the Respondent made it
abundantly clear that the Respondent had no other
intention, except to wrongfully and illegally ride on the long-
standing hard-earned goodwill and reputation of the marks
of the Appellant in every possible manner. Further the
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Respondent had fraudulently, wrongfully and illegally
claimed user of the alleged mark “SALUJA GOLD along with
Device of Sardarji” from July 26, 2004.
The Appellant then sometime on or about November,
2014 came to learn that the Respondent had started
advertising and marketing its products in an identical
and/or similar getup and manner as that of the Appellant by
using its mark “SALUJA GOLD” along with the bust
photograph of Mr. Amarjeet Singh Saluja, where the most
prominent and essential feature of the mark of the
Respondent was the photograph of Sardarji.
The Respondent is effectively practising fraud on the
consumers by its use of the alleged mark “SALUJA GOLD
with Device of Sardarji” on the products manufactured
and/or marketed by the Respondent. The particulars of such
fraud are as follows:-
(a) The Respondent is giving an impression to the members
of the public and trade that it has trade connections with the
Appellant.
(b) The consumers are purchasing the products of the
Respondent believing that the Respondent is licensed or
authorized by the Appellant or have some connection or
association with the Appellant.
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(c) The Respondent has led the consumers of the Appellant
and members of trade into believing that the products of the
Respondent are that of the Appellant.
(d) The alleged claim of the Respondent of using the offending
marks from July 27, 2004 is false and false to the knowledge
of the Respondent.
(e) By Respondent’s own admission it launched its alleged
mark “SALUJA GOLD” in the year 2014 which evidently
proved the claim of alleged user from the year 2004 by the
Respondent to be false and untrue.
(f) The Respondent is giving an impression to the public that
it is in the business since 40 years, which is not the case and
is false representation to the public.
(g) The Respondent has been destroying and/or damaging
the properties, i.e. hoardings, banners, billboards,
advertisements etc., belonging to the Appellant.
(h) The Respondent has committed various acts intended to
deceive the customers of the Appellant and/or consumers at
large.
The aforesaid wrongful and illegal actions of the
Respondent have caused serious loss and damage to the
Appellant and will continue to cause huge loss and damage
to the Appellant unless restrained. The Appellant had
reasonably assessed such loss and damage at
Rs.5,00,00,000/- (Rupees Five Crores), which sum the
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Respondent is liable to pay to the Appellant as compensation
and/or damages. In the alternative, the Appellant prays for
an enquiry to ascertain the loss and damage suffered by the
Appellant and a decree for such sum as may be found due
upon enquiry.
In the facts and circumstance aforesaid the Appellant
on having come to know of the illegal, wrongful and
fraudulent acts and activities of the Respondent immediately
took steps to stop the Respondent from its wrongful and
illegal acts by filing a Civil Suit sometime on or about April
22, 2015 before the Learned Judicial Commissioner, Ranchi,
which suit was initially numbered as Title Suit No.6 of 2015
and subsequently came to be numbered as Commercial Case
No.6 of 2015 and stood transferred to the Court of the
Learned Commercial Court, Ranchi.
During the course of hearing of the aforesaid suit, the
Appellant realised that there were some defects in the suit
and case of Appellant was not properly pleaded and as such
the Appellant filed an application under Order XXIII Rule 1
(3) read with Section 151 of the Code of Civil Procedure
seeking leave of the Learned Court to withdraw the
Commercial Case No. 6 of 2015 with a liberty to file a fresh
suit on the self same cause of action.
The Respondent filed its Written Objection to the said
Application. The said Application was taken up for hearing
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and the Learned Court by an Order dated September 29,
2020 was pleased to allow such application, subject to
payment of cost of Rs. 10,000/- to the Respondent.
The Appellant thereafter tendered the cost of Rs.
10,000/- to the Respondent, which was duly received by the
Respondent.
The Appellant thereafter sometime on or about
23.12.2020 in compliance with the Order dated September
29, 2020 passed by the Learned Commercial Court at Ranchi
in Commercial Case No.6 of 2015 filed Commercial Case
No.63 of 2020 (Mongia Steel Limited Vs Saluja Steel and
Power Private Limited) by filing Plaint with annexures before
the Learned Commercial Court at Ranchi.
The respondent thereafter sometime on or about
August, 2021 filed an application purportedly under Order
VII Rule 11 read with Section 151 of the Code of Civil
Procedure, 1908 seeking rejection of the plaint filed by the
Appellant.
The Appellant filed its Written Objection to the
purported application under Order VII Rule 11 of the Code
of Civil Procedure filed by the Respondent.
Thereafter the aforesaid suit was taken up for
hearing on the point of admission and the purported
application under Order VII Rule 11 of the Code of Civil
Procedure, 1908 filed by the respondent from time to time.
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The Learned Commercial Court by the impugned
judgment and order dated March 15, 2022 was pleased to
allow the Application under Order VII Rule 11 of the Code of
Civil Procedure, 1908 filed by the Respondent consequently
rejecting the plaint filed by the Appellant, inter alia, holding
that the plaint filed in the suit travelled beyond the
conditions imposed by the Learned Court vide order dated
September 29, 2020 in Commercial Suit No.06 of 2015,
against which the present appeal has been filed.
8. It is evident from the factual aspect as referred
hereinabove that the Appellant is engaged in the business of
manufacturing and/or marketing and/or selling of various
metallic and/or non-metallic materials, including TMT Bars,
CTD Bars, Joist, Channels, M.S. Rounds, M.S. Flats, M.S.
Wires, Common Metals, Apparatus for Lighting, Heating,
Steam Generating, Cooking, Refrigerating, Drying,
Ventilating, Water Supply and Sanitary purpose, Pipes and
tubes of Metal, etc. The Appellant was incorporated on
March 10, 1995 under the name and style Mongia Hi-Tech
Private Limited. At the time when the Appellant was
incorporated, Mr. Gunwant Singh Mongia alias Gunwant
Singh Saluja, Mr. Amarjeet Singh Saluja and Mrs. Manmeet
Kaur were its first shareholders and Directors.
The Respondent was incorporated sometime on or
about July 26, 2004 with Amarjeet Singh Saluja, Taranjeet
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Singh Saluja, Satwinder Singh Saluja as its first
shareholders and Directors.
The Respondent applied for registration of the mark
“SALUJA (Label)”, with the Registrar of Trade Marks on or
about March 14, 2013 vide Trade Mark Application
No.2496055. Inasmuch as the mark “SALUJA (Label)” which
was being used by the Respondent was different from the
numerous marks and artistic works used and owned by the
Appellant, the Appellant had absolutely no objection in the
Respondent using the mark “SALUJA (Label)” while
marketing its products.
The Appellant immediately on its incorporation
coined and adopted numerous marks. Prominent and
essential feature of all the marks adopted by the Appellant
in the year 1995 was device of photograph of its Director Mr.
Gunwant Singh Mongia and the word “MONGIA”. The
Appellant has from time to time applied for and obtained
registration over its numerous marks and some of the marks
of the Appellant are pending registration before the Trade
Marks Registry. The Appellant ever since its incorporation
has been continuously, uninterruptedly, extensively and
exclusively been using its marks.
The Appellant in the year 1995 also introduced
tagline “Nirmaan ka Majjboot Aadhaar” along with the mark
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“MONGIA with (Device of Sardarji)” and has been using such
tagline continuously.
By reason of the aforesaid, the Appellant’s products
sold, inter alia, under the said marks have captured the
imagination of the trade and public at large.
It is the case of the appellant that the Respondent on
or about June 27, 2014 filed numerous applications for
registration of marks “SALUJA GOLD with Device of Sardarji”
along with a tag line “Majboot Nirmaan Ki Guarantee” with
the Registrar of Trade Marks alleging user of such marks
since July 26, 2004. All such marks applied for registration
by the Respondent carried device of photographs of Sardarji
as its essential and prominent feature and in identical
and/or similar get up as that of the Appellant’s mark.
In the aforesaid facts and circumstance, to stop the
Respondent from its wrongful and illegal acts, the appellant
filed a Civil Suit before the Learned Judicial Commissioner,
Ranchi, which suit was numbered as Commercial Case No.6
of 2015 and stood transferred to the Court of the Learned
Commercial Court, Ranchi.
During the course of hearing of the aforesaid suit, the
Appellant realised that there were some defects in the suit
and case of Appellant was not properly pleaded and as such
the Appellant filed an application under Order XXIII Rule 1
(3) read with Section 151 of the Code of Civil Procedure
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seeking leave of the learned court to withdraw the
Commercial Case No. 6 of 2015 with a liberty to file a fresh
suit on the self same cause of action.
The Respondent filed its Written Objection to the said
Application. The said Application was taken up for hearing
and the Learned Court by an Order dated September 29,
2020 was pleased to allow such application.
The Appellant thereafter in compliance with the
Order dated September 29, 2020 passed by the Learned
Commercial Court at Ranchi in Commercial Case No.6 of
2015 filed Commercial Case No.63 of 2020.
The respondent thereafter sometime on or about
August, 2021 filed an application purportedly under Order
VII Rule 11 read with Section 151 of the Code of Civil
Procedure, 1908 seeking rejection of the plaint filed by the
Appellant.
The Appellant filed its Written Objection to the
application under Order VII Rule 11 of the Code of Civil
Procedure filed by the Respondent.
Thereafter the aforesaid suit was taken up for
hearing and the Learned Commercial Court by the impugned
judgment and order dated March 15, 2022 was pleased to
allow the Application under Order VII Rule 11 of the Code of
Civil Procedure, 1908 filed by the Respondent consequently
rejecting the plaint filed by the Appellant, inter alia, holding
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that the plaint filed in the suit travelled beyond the
conditions imposed by the Learned Court vide order dated
September 29, 2020 in Commercial Suit No.06 of 2015,
against which the present appeal has been filed.
9. The crux of the issue involved in the present case is
that while granting leave to withdraw the suit vide order
dated 29.09.2020 passed in Miscellaneous Application
No.105 of 2020 arising out of Commercial Case No.06 of
2015, the petition filed for withdrawal has been allowed with
a liberty to file a fresh suit subject to the following conditions
:-
(1) The plaintiff shall not introduce any new/fresh
cause of action,
(2) The plaintiff shall not be permitted to bring on
record any document which has been issued in his
favour after the institution of the present suit and
(3) The plaintiff shall be only permitted to seek all the
relief as sought by him in para 5 of Misc Case.
10. The learned Presiding Officer has also clarified
that if any defiance to the observation made above is found
in the newly instituted suit, then the fresh suit shall be liable
to be dismissed at the stage of admission itself.
11. The plaintiff has further been directed to serve a copy
of the fresh plaint upon the defendant or his counsel prior to
filing of the suit.
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12. The present Misc Case stands disposed of
accordingly. Main case record bearing Commercial Case
No.06/2015 has been dismissed as withdrawn.
13. The appellant, thereafter, has filed fresh suit praying
therein the following reliefs :-
a) Permanent injunction restraining the defendant its men, assigns,
servants, agents, officers, distributors, representatives or anyone
claiming through or under them from in any way or manner
infringing Plaintiff’s Registered Trade Marks, inter alia, “MONGIA
along with Device of Sardarji” by using marks “SALUJA GOLD with
Device of Sardarji” and / or any other deceptively similar and / or
identical and / or visually similar mark as that of Plaintiff’s
registered Trade Marks “MONGIA with Device of Sardarji” in any
way or manner whatsoever.
b) Permanent injunction restraining the defendant its men, assigns,
servants, agents, officers, distributors, representatives or anyone
claiming through or under them from in any way or manner passing
off and enabling others to pass off their products by using marks
“SALUJA GOLD with Device of Sardarji” and / or any other mark
having similar get up and / or which is deceptively similar and / or
identical and / or visually similar mark as that of Plaintiff’s Trade
Marks “MONGIA with Device of Sardarji” in any way or manner
whatsoever;
c) Permanent injunction restraining the defendant its men, assigns,
servants, agents, officers, distributors, representatives or anyone
claiming through or under them from in any way or manner
infringing Plaintiff’s Copyright over and in respect of its artistic
work “MONGIA with device of Sardarji” by using SALUJA GOLD
along with Device of Sardarji” and / or any other artistic work,
which is identical and / or deceptively and / or visually similar to
the artistic works of the Plaintiff;
d) Perpetual injunction restraining the defendant its men, assigns,
servants, agents, officers, distributors, representatives or anyone
claiming through or under them from in any way or manner using
device and / or photograph of “Sardarji” in a way or manner where
the photograph of Sardarji is displayed in a prominent and / or18
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essential way and / or manner and enabling others to use the same
in any way or manner whatsoever;
e) Delivery up on oath any article and / or all labels, dyes, blocks,
plates, moulds, screen prints, cylinders, advertising materials,
products, name boards, letter heads, stationeries, pamphlets,
brouchures and any other materials of the defendant bearing the
mark “SALUJA GOLD with Device of Sardarji” or any other mark
that is identical and / or deceptively and / or visually similar to the
plaintiff’s mark “MONGIA with Device of Sardarji” and the same be
cancelled and / or destroyed;
f) Decree for a sum of Rs. 5,00,00,000/- (Rupees Five Crores) only
against the defendant for damages suffered by the plaintiff;
g) In the alternative an enquiry be made to ascertain the loss and
damage suffered by the plaintiff and a decree be passed for such
sum as may be found due upon enquiry against the defendant;
h) Preliminary decree be passed in favour of Plaintiff directing the
defendant to render true and faithful accounts of profits earned by
the defendant by use of Trade Mark “SALUJA GOLD along with
Device of Sardarji” and /or any other mark that is deceptively and
/or visually similar to the mark “MONGIA with Device of Sardarji”
belonging to the Plaintiff, and a final decree be passed in favour of
the Plaintiff for the amount of profits thus found to have been made
by the Defendant after the Defendant has rendered accounts;
i) Attachment;
j) Accounts;
k) Receiver;
l) Injunction;
m) Costs;
n) Further and or other reliefs;
14. The respondent has filed an application under Order
VII Rule 11 of the C.P.C. for rejection of the plaint on the
ground that the conditional liberty which has been given by
the learned court while granting leave to file fresh suit vide
order dated 29.09.2020, has been violated and, as such,
there is deviation from the liberty so granted by the court.
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15. The ground has been taken by filing the petition
under Order VII Rule 11 of the C.P.C. that the original suit
being Commercial Case No.06 of 2015 was permitted to be
withdrawn subject to certain conditions. The condition has
been violated by filing suit by inserting the new cause of
action pertaining to the Copyright Act, 1957.
16. The learned court has considered the said
application and after going through the condition stipulated
in the order dated 29.09.2020 while granting leave to file
fresh suit, the conclusive finding has been arrived at that
insertion of the prayer pertaining to the Copyright Act is a
new cause of action and, as such, the Condition No.2 of the
order dated 29.09.2020 has been violated and on the
aforesaid ground the plaint has been rejected vide order
impugned dated 15.03.2022, which is the subject matter of
the present appeal.
Argument advanced on behalf of the appellant
17. Mr. Debnath Ghosh, learned senior counsel
appearing for the appellant, has taken the following grounds
in assailing the order impugned :-
(i) The learned court has committed gross error in
rejecting the plaint on the ground that there is deviation
in the prayer made in the subsequent suit filed in
pursuance to order dated 29.09.2020, since, the fresh
suit was filed in pursuance to the averment made at
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paragraph-5 of the miscellaneous application based
upon that the permission was granted to withdraw the
suit with a liberty to file fresh, which is the subject
matter of the suit. The learned court has not considered
the specific averment made at paragraph 5 of the
miscellaneous application and even though there is no
deviation to the condition stipulated in the order dated
29.09.2020 while granting leave to file fresh suit, the
plaint was rejected in exercise of power conferred under
(ii) The rejection of plaint also suffers from error on the
ground that the issue of Trademark and the Copyright
are interlinked cause of action and since both cannot
be segregated, hence, in order to avoid the multiplicity
of proceedings if the issue of royalty has also been
inserted in the fresh suit filed in pursuance to the leave
granted by the learned court, the same cannot be said
to suffer from an error.
(iii) The learned court has not appreciated the fact that the
order of withdrawal with conditions has not been
assailed by the respondent and once the leave has been
granted, there cannot be any opposition in filing of the
fresh suit.
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18. Learned senior counsel, based upon the aforesaid
ground, has submitted that the impugned order suffers from
an error, hence, not sustainable in the eyes of law.
Argument advanced on behalf of the Respondent
19. Per contra, Mr. Prashant Pallav, learned counsel
appearing for the respondent, defending the impugned order,
has taken the following grounds :-
(i) There is no error in the order passed by the learned
court in exercise of power conferred under Order VII
Rule 11 of the C.P.C. since, it is the admitted case
herein that the fresh suit was filed by inserting the new
cause of action which pertains to the issue of Copyright
Act.
(ii) The contention has been raised that while allowing the
application filed under Order XXIII Rule 1(3) of the
C.P.C., leave has been granted to file fresh suit subject
to compliance of certain conditions and also clarifying
in the order passed by the learned court while granting
such leave, as would be evident from the order dated
29.09.2020, that there should not be any deviation
from the condition stipulated in the order dated
29.09.2020 while filing the fresh suit.
(iii) It has been submitted that the original suit being
Commercial Case No.06 of 2015 was confined only to
the Trademark Act since, after filing of the suit, also the
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prayer was made therein raising the cause of action
pertaining to the Copyright Act which was sought to be
deleted by the appellant herein for which an application
was filed under Order VI Rule 17 seeking leave of the
court to allow the deletion of the prayer pertaining to
Section 51 and 62 of the Copyright Act, 1957 from the
cause title page of the plaint which was passed on
03.09.2015.
(iv) It has been contended by referring to the said order that
the appellant had also prayed to reserve its right to file
another suit under Section 51 and 62 of the Copyright
Act, 1957, if and when so desired, meaning thereby, the
right was reserved to file another suit under Section 51
and 62 of the Copyright Act if and when so desired and
the court has passed order to consider the said issue at
the time of final hearing of the case. But, while
reserving the right, it has been taken note by the
learned court on the basis of the prayer made on behalf
of the appellant, also suggests that the prayer
pertaining to Section 51 and 62 of the Copyright Act
has been deleted by the order passed by the court dated
03.09.2015.
(v) The argument has been advanced that the aforesaid
prayer pertaining to Section 51 and 62 of the Copyright
Act, 1957, since has been deleted, hence, the earlier
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suit being Commercial Case No.06 of 2015 will only
confine to the issue of Trademark Act.
(vi) The ground has also been taken that since the fresh
cause of action has been agitated in the fresh suit,
hence, the same having been found by the learned
court to be deviation in pursuance to the direction
passed in the order dated 29.09.2020 hence, the
rejection of the plaint based upon the specific
observation made in the said order that in case of any
deviation made from the condition while granting
liberty to file suit will be there, the suit will be dismissed
and acting in pursuance to the said observation, if the
plaint has been dismissed, it cannot be said to suffer
from an error.
(vii) The argument has been advanced that the cause of
action pertaining to the Copyright Act has been raised
by the appellant by filing a separate suit being
Commercial Case No.06 of 2015 for the cause of action
of sometime of the year 2014 in a composite suit
seeking relief for infringement of Copyright as well as
Trademark but the appellant has deleted the pleading
on the issue of Copyright. If the prayer pertaining to the
Copyright Act, after withdrawal of the said issue from
the Commercial Case No.06 of 2015 if allowed to be
sustained by addition of the prayer pertaining to the
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Copyright Act along with the issue of Trademark Act,
then the issue pertaining to the Copyright Act by which
the appellant has sought to get an adjudication of an
issue which had crept up sometime in the year 2014
and, as of now, is barred by limitation. Hence, allowing
the prayer by insertion of the issue of Copyright Act will
be contrary to the Limitation Act and, therefore, the
plaint is to be rejected in view of the condition
stipulated under Order VI Rule 11(d) of the C.P.C.
(viii) The issue has also been raised that the withdrawal of
the suit being Commercial Case No.06 of 2015 in view
of the provision of Order XXIII Rule 1(3) of the C.P.C.
and as per the statutory mandate the defect is required
to constitute to be a formal defect within the meaning
of Order XXIII Rule 1(3)(a) of the C.P.C. But, in the
withdrawal application, no formal defect has been
pointed out and, as such, on this ground also, the order
passed by the learned court cannot be said to suffer
from any error.
20. Mr. Debnath Ghosh, learned senior counsel
appearing for the appellant, in response, has submitted that
so far as the issue of formal defect for the purpose of
withdrawal as per requirement stipulated under Order XXIII
rule 1(3)(a) of the C.P.C. is concerned, the order of
withdrawal since has not been challenged by the respondent
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and, as such, it is not available for him to now take the
ground pointing out error in the order dated 29.09.2020
passed by giving liberty to file a fresh suit subject to certain
conditions.
21. We have heard the learned counsel for the parties
and gone through the pleading made in the memo of appeal
as also the finding recorded by the learned court in the
impugned judgment.
22. The issue which requires consideration herein are as
under :-
(i) Whether the order passed by the learned court dated
15.03.2022 rejecting the plaint is sustainable in the eye
of law, if filed in deviation to the condition stipulated by
the learned court in its order dated 29.09.2020 passed
in Commercial Case No.06 of 2015.
(ii) Whether seeking relief with respect to the Copyright
Act, which was not the subject matter of the suit
pertaining to the Commercial Case No.06 of 2015, will
be construed to be a fresh cause of action or not?
(iii) Whether the reference of subject matter of suit as
referred in paragraph-5 of the Miscellaneous
application can be construed to be the suit pertaining
to Trademark Act after deletion of the issue of Copyright
and, as such, the issue pertaining to Copyright Act will
be construed to be fresh cause of action or not?
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23. All the issues are interlinked and are being
considered together hereinbelow but before consideration of
the aforesaid issues, certain admitted facts needs to be
referred herein:-
The appellant herein filed a Civil Suit being
Commercial Case No.6 of 2015 against the respondent before
the Commercial Court, Ranchi. The allegation therein is that
the respondent company is intentionally camouflaging the
established registered trademark of the appellant in their
trade of steel products.
The appellant had initially filed a composite suit
seeking relief for infringement of copyright as well as
trademark. However, the appellant filed an application under
Order VI Rule 17 for seeking amendment in the plaint to the
effect that the prayer pertaining to Section 51 and 62 of the
Copyright Act may be deleted from the plaint of Commercial
Case No.06 of 2015. The said application was allowed
whereby and whereunder the amendment sought for has
been considered to be formal in nature and hence, the same
has been allowed by granting leave to delete the cause of
action pertaining to the Copyright Act.
Since as per the appellant, there were some defects
in the suit and case of appellant was not properly pleaded,
the appellant filed an application under Order XXIII Rule 1
(3) read with Section 151 of the Code of Civil Procedure
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seeking leave of the learned court to withdraw the
Commercial Case No. 6 of 2015 with a liberty to file a fresh
suit on the self-same cause of action.
The Respondent filed its Written Objection to the said
application.
The learned Court by an order dated 29.09.2020 has
allowed the application filed under Order XXIII Rule 1 (3) of
the Code of Civil Procedure with liberty to the appellant to
file a fresh suit.
The appellant, thereafter, filed Commercial Case
No.63 of 2020 in terms of the aforesaid order.
The respondent filed an application under Order VII
Rule 11 of the Code of Civil Procedure, 1908 seeking
rejection of the plaint filed by the appellant.
The Learned Commercial Court by the impugned
judgment 15.03.2022 allowed the application filed by the
respondent under Order VII Rule 11 of the Code of Civil
Procedure, 1908 consequently rejecting the plaint filed by
the appellant, inter alia, holding that the plaint filed in the
suit travelled beyond the conditions imposed by the learned
Court vide order dated 29.09.2020 in Commercial Suit No.06
of 2015, against which the present appeal has been filed.
24. The provision of Order VII Rule 11 of the C.P.C. is
also required to be referred herein which reads hereunder as
:-
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Order VII
11. Rejection of plaint.– The plaint shall be rejected
in the following cases:–
(a) where it does not disclose a cause of action;
(b) where the relief claimed is undervalued, and the
plaintiff, on being required by the Court to correct the
valuation within a time to be fixed by the Court, fails
to do so;
(c) where the relief claimed is properly valued, but the
plaint is returned upon paper insufficiently stamped,
and the plaintiff, on being required by the Court to
supply the requisite stamp-paper within a time to be
fixed by the Court, fails to do so;
(d) where the suit appears from the statement in the
plaint to be barred by any law;
(e) where it is not filed in duplicate;
(f) where the plaintiff fails to comply with the
provisions of rule 9;
Provided that the time fixed by the Court for the
correction of the valuation or supplying of the requisite
stamp-paper shall not be extended unless the Court,
for reasons to be recorded, is satisfied that the plaintiff
was prevented by any cause of an exceptional nature
from correcting the valuation or supplying the
requisite stamp-paper, as the case may be, within the
time fixed by the Court and that refusal to extend such
time would cause grave injustice to the plaintiff.
25. It is evident from the provision of Order VII Rule 11
that the plaint can be rejected or returned back in favour of
the plaintiff subject to availability of either of the conditions
as referred in (a) or (b) or (c) or (d).
26. The reference of Order XXIII Rule 1(3) of the C.P.C. is
also required to be made which reads hereunder as :-
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Order XXIII
1. Withdrawal of suit or abandonment of part of claim
–
(1) ... ... ...
(2) ... ... ...
(3) Where the Court is satisfied,--
(a) that a suit must fail by reason of some
formal defect, or
(b) that there are sufficient grounds for
allowing the plaintiff to institute a fresh suit
for the subject matter of suit or part of a
claim,
It may, on such terms as it thinks fit grant the
plaintiff permission to withdraw from such suit or
such part of the claim with liberty to institute a
fresh suit in respect of the subject-matter of such
suit or such part of the claim.
27. It is evident from the aforesaid provision that the
plaintiff has been given a liberty to withdraw the suit by filing
appropriate application under the aforesaid provision and
the concerned court can grant such indulgence with a liberty
to file fresh suit subject to availability of the two conditions
:-
(i) formal defect, or
(ii) that there are sufficient grounds for allowing the
plaintiff to institute a fresh suit for the subject matter
of suit or part of a claim.
28. As per Order XXIII Rule 1(3) of the C.P.C., the suit
may only be withdrawn with permission to bring a fresh suit
when the court is satisfied that the suit must fail for reason
of some formal defect or that there are other sufficient
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grounds for allowing the plaintiff a fresh suit. The power to
allow withdrawal of a suit although is discretionary. The
plaintiff has to make out a case in terms of Order XXIII Rule
1(3) (a) or (b) of the C.P.C. by asking for leave. The court can
allow the application filed under Order XXIII Rule 1(3) of the
C.P.C. for withdrawal of the suit with a liberty to bring a fresh
suit only if the condition in either of the Clauses (a) or (b),
i.e., existence or formal defects or sufficient grounds.
29. It has been laid down by Hon’ble Apex Court that the
principle under Order XXIII Rule 1(3) of the C.P.C. is founded
on public policy to prevent institution of suit again and again
on the same cause of action, for ready reference, Para-9 of
the judgment rendered by Hon’ble Apex Court in the case of
V. Rajendran and Another v. Annasamy Pandian (Dead)
through legal representatives Karthyayani Natchiar
[(2017) 5 SCC 63] is being referred herein which reads
hereunder as :-
“9. Order 23 Rule 1(3) CPC lays down the following
grounds on which a Court may allow withdrawal of suit.
It reads as under:
“1. Withdrawal of suit or abandonment of part of
claim.–(1)-(2) * * *
(3) Where the Court is satisfied–
(a) that a suit must fail by reason of some formal
defect, or
(b) that there are sufficient grounds for allowing
the plaintiff to institute a fresh suit for the
subject-matter of a suit or part of a claim,31
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it may, on such terms as it thinks fit, grant the
plaintiff permission to withdraw from such suit or
such part of the claim with liberty to institute a fresh
suit in respect of the subject-matter of such suit or
such part of the claim.”
(emphasis supplied)
As per Order 23 Rule 1(3) CPC, suit may only be
withdrawn with permission to bring a fresh suit when the
Court is satisfied that the suit must fail for reason of
some formal defect or that there are other sufficient
grounds for allowing the plaintiff to institute a fresh suit.
The power to allow withdrawal of a suit is discretionary.
In the application, the plaintiff must make out a case in
terms of Order 23 Rules 1(3)(a) or (b) CPC and must ask
for leave. The Court can allow the application filed under
Order 23 Rule 1(3) CPC for withdrawal of the suit with
liberty to bring a fresh suit only if the condition in either
of the clauses (a) or (b), that is, existence of a “formal
defect” or “sufficient grounds”. The principle under Order
23 Rule 1(3) CPC is founded on public policy to prevent
institution of suit again and again on the same cause of
action.”
30. Adverting to the factual aspect of the case herein, it
is evident from the plaint of Commercial Case No.06 of 2015
that originally the relief was sought for pertaining to two
prayers, first prayer pertains to the Trademark Act and
second pertains to the Copyright Act.
31. The appellant has filed an application under Order VI
Rule 17 CPC for seeking amendment in the plaint to the
effect that the prayer pertaining to Section 51 and 62 of the
Copyright Act may be deleted from the plaint of Commercial
Case No.06 of 2015. The said application had been allowed
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vide order dated 03.09.2015 whereby and whereunder the
amendment sought for has been considered to be formal in
nature and hence, the same has been allowed by granting
leave to delete the cause of action pertaining to the Copyright
Act, for ready reference, the said order is being referred
herein which reads hereunder as :-
3.9.15 “Pursuant to order dated 12.8.15 this
petition has been filed today whereby it is prayed that
now petition dated 12.8.15 may be considered as has
been filed under Order VI Rule 17 r/w section 151 CPC.
It has been submitted in the petition dated. 12.8.15 that
Title Suit has been filed under sections 29 and 134 of the
Trade Marks Act 1999 and appellant may be allowed to
delete the words “and section 51 and 62 of the Copyright
Act 1957″ from the cause title page of the plaint.
Since the amendment is formal in nature, prayer
is allowed. Learned counsel is directed to make
amendment in this regard in the manner as prayed for.
Further learned counsel prays to reserves its right
to file another suit under section 51 and 62 of the
Copyright Act 1957 if and when so desired. This issue
will be considered at the time of final hearing of the suit.
Put up on 17.9.15 after fresh stamp report
obtained from Sharistedar.”
32. It is evident from the order as referred hereinabove
that while allowing the amendment for deletion of the issue
pertaining to Copyright Act, the appellant has reserved its
right to approach the court of law pertaining to Copyright Act
by filing fresh suit. The court has made observation that the
appropriate order shall be passed at the time of final hearing
of the case. Therefore, the fact about deletion of issue of
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Copyright Act is admitted one and that is by virtue of the
order passed by the learned court on an application filed
under Order VI Rule 17 of the C.P.C. on behalf of the
appellant.
33. The suit being Commercial Case No.06 of 2015,
therefore, will be said to be filed only for the purpose of
adjudication of the issue pertaining to the Trademark Act.
The suit proceeded. The written statement was filed. Issues
framed and even the respondent has led the evidence and at
that juncture, a miscellaneous application was filed being
Miscellaneous Civil Application No.105 of 2020 seeking
therein prayer for withdrawal of the Commercial Case No.06
of 2015. The said petition contains a statement at paragraph
5 wherein it has been stated that the plaintiff has since come
to know that there are formal defects in the plaint and/or no
proper and separate prayers inter alia for passing off,
infringement of Trade Mark and infringement of Copyright
has been prayed for against the defendant, which has all
throughout been the desire of the plaintiff. The plaintiff as
such intends to withdraw the instant suit with
liberty/permission from the Hon’ble court to institute a fresh
suit against the defendant in respect to the subject matter of
the suit, for ready reference the statement made at
paragraph-5 of the application is being referred hereunder
as :-
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“5. The plaintiff has since come to know that there are
formal defects in the plaint and/or no proper and
separate prayers inter alia for passing off, infringement
of Trade Mark and infringement of Copyright has been
prayed for against the defendant, which has all
throughout been the desire of the plaintiff. The plaintiff
as such intends to withdraw the instant suit with
liberty/permission from the Hon’ble court to institute a
fresh suit against the defendant in respect to the subject
matter of the suit.”
34. The said miscellaneous application was allowed vide
order dated 29.09.2020 which is at page 243 of the paper
book. The said order starts with the word by making
reference of the averment at paragraph 5 of the said
application. The reference of the statement made at
paragraph-6 of the miscellaneous application has also been
made to the effect that due to numerous defects in the plaint
filed in the instant suit, the plaintiff intends to withdraw the
instant suit with liberty/permission to file a fresh suit.
35. It further appears that the said application had
vehemently been opposed by filing rejoinder thereto which is
also available on record. The objection has also been taken
note, particularly, by making reference of paragraph-6 of the
miscellaneous application wherein it has been stated that
the plaintiff has not specifically pointed out as to what are
the numerous defects on account of which the suit is liable
to fail and therefore the prayer of the plaintiff cannot be
allowed on such vague averment made in the petition.
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36. The learned court has passed the order by making
reference of the original prayer made in the plaint, i.e.,
“Decree of perpetual injunction restraining the defendant, its
directors, servants, agents, distributors, franchisees, dealers,
representatives and assigns from using the trade marks as
mentioned in Annexure-2 and 2/A and/or any other trade
mark deceptively or confusingly similar to the plaintiff’s
registered well known artistic work of the Trademark having
photograph of Sardar (Annexure 1) or in any other manner
infringing the same and passing off their goods”.
37. Besides this, the plaintiff has prayed for damages of
the suit.
38. The learned court has allowed the miscellaneous
application by coming to the conclusion that the formal
defect is there. No reference having been made by the
appellant with respect to the suit describing the suit property
as Survey No.192/9 but the respondents are said to have
transferred the patta for the suit property settling as Survey
No. 192/14. The court has considered that the defect in the
survey number of the suit property goes to the very core of
the subject matter of the suit and the entire proceedings
would be fruitless if the decree holder is not able to get the
decree executed successfully and thus, the said defect will
constitute to be a “formal defect” within the meaning of Order
23 Rule 1(3)(a) CPC. The court has also considered that the
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respondents are said to have executed an Inam settlement
deed on 21.09.2012, in favour of their son Aranmanai
Pandian, mentioning the suit property as Survey No.
192/14. The court, in view of the aforesaid has found the
nature of defect to be formal and hence, the prayer for
withdrawal of the suit has been allowed with a liberty to file
a fresh suit subject to the condition that (1) the plaintiff shall
not introduce any new/fresh cause of action, (2) the plaintiff
shall not be permitted to bring on record any document
which has been issued in his favour after the institution of
the present suit and (3) the plaintiff shall be only permitted
to seek all the relief as sought by him in para 5 of Misc Case
which has been noted above separately in the prayer portion
of the plaint. The further direction has been passed clarifying
that if any deviance to the observation made above is found
in the newly instituted suit then the fresh suit shall be liable
to be dismissed at the stage of admission itself.
39. The plaintiff (appellant herein) has further been
directed to serve a copy of the fresh plaint upon the
Defendant or his Counsel prior to filing of the suit.
40. It is, thus, evident that the permission to withdraw
the suit was granted subject to the leave to file fresh suit
depending upon three conditions. The condition No.(3) is
with the permission to seek all the relief as sought by the
appellant in paragraph 5 of the miscellaneous case.
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Although the statement made at paragraph-5 of the
miscellaneous case has already been referred hereinabove,
but again at the risk of repetition, the same is being referred
hereunder as :-
“5. The plaintiff has since come to know that there are
formal defects in the plaint and/or no proper and
separate prayers inter alia for passing off, infringement
of Trade Mark and infringement of Copyright has been
prayed for against the defendant, which has all
throughout been the desire of the plaintiff. The plaintiff
as such intends to withdraw the instant suit with
liberty/permission from the Hon’ble court to institute a
fresh suit against the defendant in respect to the subject
matter of the suit.”
41. It is evident from the statement made at paragraph-
5 as quoted and referred hereinabove that the prayer has
been made by way of specific pleading made therein that the
liberty may be granted to file fresh suit in respect to the
subject matter of the suit.
42. The appellant has filed fresh suit praying therein by
insertion of the relief pertaining to Section 51 and 62 of the
Copyright Act also.
43. The respondent has filed an application under Order
VII Rule 11 of the C.P.C. for rejection of the plaint on the
ground that the condition based upon that the leave was
granted by the learned court vide order dated 29.09.2020,
has been violated by insertion of a new cause of action
pertaining to the Copyright Act.
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44. The ground has also been taken that the issue of
Copyright Act cannot be allowed to be inserted in the present
suit in the garb of leave having been granted by the court
vide order dated 29.09.2020, since, the cause of action
pertaining to the Copyright Act was of the year 2014 and
hence, the said suit will be barred by limitation after expiry
of the period of three years as provided under Section 57 of
the Limitation Act.
45. Although the issue of limitation has been raised and
even though there is no consideration to that effect in the
order of the learned court but since the same involves the
legal issues, as such, the same has been taken into
consideration on the basis of settled position of law that a
suit cannot be allowed to be filed after lapse of a period of
three years as provided under Article 57 of the Limitation Act
and admittedly herein, the suit for Copyright was filed in the
year 2015 for the cause of action of the year 2014 and
subsequently withdrawn and after getting leave to file fresh
suit, the prayer with respect to Copyright has also been
inserted after lapse of the period of limitation in the garb of
the leave granted by the learned court.
46. Even in the case of amendment, the amendment
cannot be allowed if the cause of action which is sought to
be inserted by way of amendment is barred by limitation,
since, the moment the amendment will be allowed, it will
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date back to the cause of action and, as such, the principle
of limitation is having applicability in such circumstances.
47. It needs to refer herein that the courts would, as a
rule, decline to allow amendments, if a fresh suit on the
amended claim would be barred by limitation on the date of
the application, reference in this regard may be made to the
Judgment rendered by the Hon’ble Apex Court in L.J. Leach
& Co. Ltd. v. Jardine Skinner & Co., 1957 SCC OnLine
SC 68.
48. Further, the Hon’ble Apex Court in the case of
Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil
and Ors., AIR 1957 SC 363, has observed which reads as
under:
“All amendments ought to be allowed which satisfy the two
conditions (a) of not working injustice to the other side,
and (b) of being necessary for the purpose of determining
the real questions in controversy between the parties… but
I refrain from citing further authorities, as, in my opinion,
they all lay down precisely the same doctrine. That
doctrine, as I understand it, is that amendment should be
refused only where the other party cannot be placed in the
same position as if the pleading had been originally
correct, but the amendment would cause him an injury
which could not be compensated in costs. It is merely a
particular case of this general rule that where a plaintiff
seeks to amend by setting up a fresh claim in respect of a
cause of action which since the institution of the suit had
become barred by limitation, the amendment must be
refused; to allow it would be to cause the defendant an
injury which could not be compensated in costs by
depriving him of a good defence to the claim. The ultimate40
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test therefore still remains the same: Can the amendment
be allowed without injustice to the other side, or can it not
?”
49. It is settled connotation of law that an amendment
once incorporated relates back to the date of the suit.
However, the doctrine of relation back in the context of
amendment of pleadings is not one of universal application
and in appropriate cases the Court is competent while
permitting an amendment to direct that the amendment
permitted by it shall not relate back to the date of the suit
and to the extent permitted by it shall be deemed to have
been brought before the Court on the date on which the
application seeking the amendment was filed, reference in
this regard be made to the Judgment rendered by the
Hon’ble Apex Court in the case of Siddalingamma and Anr.
v. Mamtha Shenoy, [2001] 8 SCC 561.
50. The argument has also been advanced in this context
that it is the sole purpose of the withdrawal of the original
suit, being Commercial Case No.06 of 2015, in the garb of
formal defect, is insertion of a fresh cause of action
pertaining to Section 51 and 62 of the Copyright Act, which
cannot be permitted to be inserted by virtue of expiry of the
period of limitation.
51. It is the admitted position herein that the permission
of withdrawal of the suit being Commercial Case No.06 of
2015 was granted vide order dated 29.09.2020. Thus, order
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dated 29.09.2020 has not been challenged by the
respondent. Further, the conditions stipulated in the order
dated 29.09.2020 has also not been assailed by the
appellant.
52. Although this point has been raised that permission
was granted to withdraw the suit with a leave but since that
order was not challenged by the respondent and, as such, it
is not available for him to take that ground. But, the question
which is now being considered by this Court that even
accepting the fact that the order granting permission to
withdraw and leave to file fresh suit is admitted one, then
can the fresh suit will be allowed to be filed inserting the
new/fresh cause of action.
53. The appellant, in pursuance to the order dated
29.09.2020 has filed a fresh suit also adding the new prayer
of Copyright Act:-
(i) Whether insertion of the issue of Copyright Act is
construed to be fresh cause of action or not?
(ii) Whether the same is considered to be defiance to the
condition stipulated in the order dated 29.09.2020?
(iii) Whether the condition No.(3) basis upon which
permission was granted to file fresh suit which refers about
the subject matter of suit “will the issue of Copyright be said
to be subject matter of the suit after withdrawal of the prayer
pertaining to the Copyright Act?”
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54. We have already referred hereinabove that the suit
being Commercial Case No.06 of 2015 was filed both for
Trademark Act and Copyright Act, but the prayer pertaining
to the Copyright Act was already amended on the basis of an
order passed on an application filed on behalf of the
appellant under Order VI Rule 17 of the C.P.C. vide order
dated 03.09.2015, as quoted and referred hereinabove.
Therefore, the suit which was filed, by virtue of the effect of
the order dated 29.09.2020 will be said only to the issue of
Trademark Act.
55. Since the withdrawal of the suit and leave to file fresh
suit was subjective one with specific condition that plaintiff
shall not introduce any new/fresh cause of action and the
plaintiff shall be only permitted to seek all the relief as
sought for by him in paragraph 5 of the miscellaneous case.
56. The introduction of new/fresh cause of action has
been taken as a ground for rejection of the plaint.
57. This Court is of the view that when the appellant
himself has confined the first suit being Commercial Case
No.06 of 2015 only with respect to the issue of Trademark
Act by deleting the issue of Copyright Act by virtue of order
passed by the learned court dated 03.09.2015, then the suit
being Commercial Case No.06 of 2015 will only be the
subject matter of Trademark Act. The issue of Copyright Act
will admittedly be new/fresh cause of action.
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58. This Court is further of the view that if the issue of
Copyright Act will not be considered to be a new/fresh cause
of action then such consideration will be contrary to the
judicial order passed by the concerned court dated
03.09.2015 whereby and whereunder leave was granted to
delete the prayer pertaining to Copyright Act.
59. Further, this Court has gone through the statement
made at paragraph-5 of the miscellaneous application
wherein also it has been stated about grant of leave to file
fresh suit on the subject matter of the suit then what would
be the subject matter of the suit of Commercial Case No.06
of 2015. Admittedly, after effect of the amendment and
deletion of the prayer pertaining to the Copyright Act, as
would be evident from the first page of the miscellaneous
application as available on page No.93 of the paper book, the
prayer pertaining to the Copyright Act will be treated to be
new/fresh cause of action otherwise if the contention of the
appellant will be accepted, then the same will be contrary to
the judicial order passed by the learned court dated
03.09.2015.
60. It also needs to refer herein that the application filed
under Order XXIII Rule 1(3) of the C.P.C. as available in
Annexure-3, wherein statement has been made at
paragraph-4 that the appellant since has not satisfied with
the services of its conducting Advocate who has drafted the
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plaint in the instant suit and has been conducting the
instant suit and as such, approached another counsel where
the appellant was advised to seek relief against the defendant
for infringement of Trademark and Copyright, passing of
damages and other consequential reliefs.
61. It has also been stated that instead of seeking
amendment of the plaint it should withdraw the instant suit
with the leave of the Hon’ble Court to institute a fresh suit
on the self same cause of action and by properly
incorporating reliefs therein, for ready reference, paragraph-
4 of the application filed under Order XXIII Rule 1(3) of the
C.P.C. is being quoted hereunder as :-
“4. The Plaintiff, in the meantime, not satisfied with
the services of its conducting advocate, who had drafted
the plaint in the instant suit and has been conducting
the instant suit, sometime in or about August, 2020
approached another Advocate and placed the cause
papers of the instant suit before him and Informed him
that the plaintiff Intended to seek relief against the
defendant for infringement of Trade Marks and
Copyrights, Passing Off, Damages and other
consequential reliefs. The Learned Advocate after
perusing the cause papers of the instant suit informed
the plaintiff that reliefs as desired by the plaintiff has not
been properly prayed for in the instant suit and that the
plaint filed in the instant suit had formal defects. The
plaintiff was further advised that inasmuch as trial had
commenced in the instant suit, in the interest of justice,
instead of seeking amendment of the plaint it should
withdraw the instant suit with the leave of the Hon’ble
Court to institute a fresh suit on the self-same cause of
action and by properly incorporating reliefs therein,45
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which have not been properly prayed for in the instant
suit.”
62. Thus, it is evident that for the purpose of making
prayer with respect to the issue of Copyright, the application
under Order XXIII Rule 1(3) of the C.P.C. has been filed for
withdrawal of the suit with a leave to file a fresh one and so
as to include also the prayer pertaining to Copyrights.
63. This Court, therefore, is of the view that the appellant
has tried to misuse the judicial proceeding which would be
evident from the statement as has been made at paragraph-
4 itself. If that be so, then why an application was filed under
Order VI Rule 17 of the C.P.C. for withdrawal of the issue of
Copyright Act which has been allowed vide order dated
03.09.2015 and thereafter when the suit has proceeded,
then the application was filed under Order XXIII Rule 1(3) of
the C.P.C. on 10.09.2020.
64. Therefore, withdrawal application is only for the
purpose of again filing a fresh suit along with the cumulative
prayer of Trademark and Copyright issues.
65. As has been submitted by the learned counsel for the
respondent, the suit has proceeded and at the stage of
evidence of the defendant, application for withdrawal was
filed and thereby the learned court has granted such liberty
to file fresh suit but without addition of any new/fresh cause
of action.
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66. Admittedly, the insertion of Copyright Act in the fresh
suit is in defiance to the condition stipulated by the learned
court, i.e., Condition No.(1) as available in the order dated
29.09.2020 and the Condition No.(3) together.
67. This Court, having discussed the legal as well as the
factual aspect and after having gone through the impugned
order wherefrom it is evident that the learned court has
considered the insertion of the issue of Copyright to be
deviation from the Condition No.(1) and (3) of the order dated
29.09.2020 and since the leave was granted to file fresh suit
depending upon the conditions and there is violation of said
conditions, hence, the plaint if has been rejected in exercise
of power conferred under Order VII Rule 11 of the C.P.C., the
same cannot be said to suffer from an error.
68. Accordingly, the instant appeal fails and the same is
hereby dismissed.
69. Pending interlocutory application(s), if any, also
stand(s) disposed of.
I agree (Sujit Narayan Prasad, J.)
(Rajesh Kumar, J.) (Rajesh Kumar, J.)
Birendra/A.F.R.
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