Judgment :- K. Sampath. J. 1. This is an application for permission to amend para - 27(a) of the plaint, by substituting the description of the goods therein by the following description of goods as found in User Certificate of Trade Mark No. 129304 :- "Organo-therapeutic preparation consisting of or containing osseous material of young animals." The description already there is" Pharmaceutical, veterinary and sanitary substances, children's and invalids' foods ; plasters materials for bandaging; material for staffing tooth, dental wax, disinfectant, preparations for killing weeds and disharming vermin". 2. The affidavit filed in support of the application is sworn to by one Rajendra kumar, advocate and legal consultant in the firm of Remfry and Sagar Trade Mark Attorneys. 3. The allegations in the affidavit are as follows:- (a) The firm of Remfry and Sagar handles a large number of trade marks renewals and other legal occurrences with respect to trade marks of their clients. The details of all these trade marks are entered in the computer, as well as manually operated cards. The firm came to be entrusted with the trade mark "OSSOPAN" of the plaintiff-Company registered under 129304 in Class-5 since 1983. The trade mark was registered with effect from 13.05.1947. With respect to this trade mark, the plaintiff-Company had discussions and disputes with the defendants-Company since 1986. This resulted in the plaintiff-Company issuing "Cease and Desist" notice to the defendant-Company. The defendant-Company filed a suit under section 120 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) against the plaintiff-Company, a petition for rectification of the registered trade mark and an application for the registration of the trade mark claiming proprietorship. In pursuance of this, the plaintiff-Company instructed Remfry and Sagar to initiate legal proceedings in Madras against the defendant-Company. The plaintiff-Company sent a power of attorney made in favour of a number of legal consultants in Remfry and Sagar, in January, 1992. As the suit had to be filed in Madras, Mr. C. Daniel, advocate was handed over the papers and instructions were given to him. At that time, the plaintiff-Company were not in possession of the legal user certificate for trade mark No.129304 "OSSOPAN". In its absence, a photocopy of the manually operated card containing particulars of the goods comprised in the said application was sent to Mr. C. Daniel. Mr. C. Daniel, advocate was handed over the papers and instructions were given to him. At that time, the plaintiff-Company were not in possession of the legal user certificate for trade mark No.129304 "OSSOPAN". In its absence, a photocopy of the manually operated card containing particulars of the goods comprised in the said application was sent to Mr. C. Daniel. Mr. C. Daniel verified this to be correct, on obtaining photocopy of the journal dated 1.10.1948 from Madras Trade Mark office, containing the publication of the application of the plaintiff-Company for registration of "OSSOPAN" in 1947. At the same time, the deponent instructed plaintiff's Bombay office to apply for a user certificate from the Trade Mark Registry, Bombay. The particulars of the goods for which the application had been made by the plaintiff-Company in 1947 were as follows. "Pharmaceutical, veterinary and sanitary substances, children's and invalids' foods; plasters, material for bandaging; material for staffing tooth, dental wax, disinfectants, preparation for killing weeds and disharming vermin" * . On this basis, Mr. C. Daniel prepared a plaint and sent it to the deponent's firm Remfry and Sagar for approval. They approved the same and the deponent signed the plaint on the above basis. (b) On 3.8.93, the deponent was able to get user certificate issued by the Bombay Trade Mark office on 28.7.93. This user certificate was sent to Mr. Daniel on 5.8.93. The suit was filed by him alongwith the user certificate. The prayer for injunction in the suit was with respect to the goods as furnished by the deponent and as per journal entry of 1949. (c) It was now discovered that the particulars of the goods, as contained in the user certificate were as hereunder : "Organs-therapeutic preparations consisting of or containing osseous material of young animals." * This was overlooked by the deponent and Mr. Daniel. They had assumed that the particulars in the user certificate would be identical with the records maintained in their office and as contained in the advertisement in the trade mark's journal No. 1948. This was also not noticed by the defendant or their counsel, there was also no reference to this in the written statement or in the notice filed on behalf of the defendant-Company. Application No. 707/93 filed by the plaintiff-Company came up for hearing on 29.03.94 and 30.03.94. This was also not noticed by the defendant or their counsel, there was also no reference to this in the written statement or in the notice filed on behalf of the defendant-Company. Application No. 707/93 filed by the plaintiff-Company came up for hearing on 29.03.94 and 30.03.94. The Senior counsel appearing for the defendant-Company observed that the prayer in the suit and the interim application had no reference to the goods mentioned in the user certificate and the application had therefore to be dismissed. (d) This plea of the Senior Counsel obliged the plaintiff- Company to look into the matter again and as they did not have any record of this particular trade mark for the period prior to 1983, they approached the trade mark registry. Bombay for the details of its prior history. They found that M/s Mayer & Baker Limited, registered proprietor of trade mark "OPACIN" had opposed "OSSOPAN" application of 1947. There was a compromise reached and the plaintiff-Company agreed to amend and limit the list of goods for registration to read as follows : "Organo-therapeutic preparations consisting of or containing osseous material of young animals." * This amendment was accepted by the Registrar of Trade Mark, Bombay by his order dated 26.08.1949 and the amended application came to be advertised in the trade mark journal No. 76, dated 1.12.1949. Thereafter, "OSSOPAN" came to be registered for goods of above limited specification. Error in the certificate issued by the registration office was pointed out to the Registry of Trade Marks, Bombay and the suit had been filed with the flawed certificate. The plaintiff-Company had applied for correct legal user certificate. The above circumstances had necessitated filing of the application for amendment by replacing the description of the goods to bring it in conformity with the user certificate. The necessity for amendment had been due to oversight by all parties concerned and was neither wanton nor willful. The purpose of the amendment is to correct the error. By reason of the amendment, the law of limitation would also be not violated. The infringement was continuous and by the permission for amendment being granted, the defence would not be affected. By the amendment, the relief would be limited to the actual nature and composition of goods manufactured by parties and the amendment is essential to determine the real question in controversy between the parties. The infringement was continuous and by the permission for amendment being granted, the defence would not be affected. By the amendment, the relief would be limited to the actual nature and composition of goods manufactured by parties and the amendment is essential to determine the real question in controversy between the parties. There had not been any undue delay. The error was discovered on 30.03.94 and the application had been filed on 13.04.94. 4. The defendant-Company have filed a counter denying the allegations in the affidavit of Rajendra kumar. They have called upon the deponent to prove the discussions and disputes, the plaintiff-Company had with the defendant-Company since 1986. The power of attorney pursuant to which the deponent had signed the plaint and also other documents and affidavit were invalid and void. The deponent had failed to explain how his firm was not aware of the goods in respect of which there was registration when the suit was filed in August, 1993 10 years after the plaintiff-Company came to be entrusted with the trade mark "OSSOPAN" in 1983. The prayer is beyond the scope of registration. When the prayer is for infringement, the suit has to be dismissed in limine. There could not be any acceptable explanation for filing a suit for infringement by a foreign corporation whose trade marks were maintained by a firm of trade mark consultant in India praying for reliefs beyond the scope of registration. Advertisement in the trade mark journals did not amount to registration of trade mark and the advertisement could not be the basis for filing a suit for infringement which was a statutory right. The plaintiff-Company had not explained as to how the suit had been filed for infringement of goods not covered by registration. The plaintiff-Company had tried to camouflage the issue. Material facts had been deliberately suppressed. The plaintiff-Company and the counsel had all along been aware that the trade mark was registered only in respect of "Organo-therapeutic preparations consisting of or containing osseous material of young animals". There is a deliberate attempt to mislead the Court. There is a distortion of facts and law. When the relief prayed for is beyond the scope of the registration, the suit had to be dismissed in limine. The amendment sought for is in the nature of substitution and this could not be allowed. There is a deliberate attempt to mislead the Court. There is a distortion of facts and law. When the relief prayed for is beyond the scope of the registration, the suit had to be dismissed in limine. The amendment sought for is in the nature of substitution and this could not be allowed. The affidavit filed by the power of attorney holder had not explained how this basic error was not discovered till 30.3.94. The prayer has therefore to be rejected. 5. Mr. U.N.R. Rao, learned Senior Counsel for Mr. C. Daniel reiterated the contents in the affidavit filed in support of the application for amendment and submitted that there was a bonafide mistake and the plaintiff-Company must be afforded an opportunity to have the mistake rectified. The trade mark number is given in the plaint and the character of the suit is not changed. It is a continuous cause of action and as soon as the mistake was discovered, the plaintiff-Company had come up with the present application for amendment. 6. Mr. C.A. Sundaram, Senior Counsel, appearing for Ms. K. Banumathy for the respondent submitted as follows:- There is a total substitution of the relief asked for and this cannot be allowed. Again amendment can be allowed only if the character of the suit is not altered and that in the process, no prejudice should be caused to the defendant. If the amendment is allowed, the defence of limitation would be lost to the defendant-Company. He referred to Sections 29, 78 and 79 of the Act and submitted that injunction is the normal relief in the case of infringement and not compensation as in the case of passing off and that penalty is provided for applying false trade marks, trade descriptions etc., and for selling goods to which a false trade mark or false trade description is applied. The plaintiff has nothing to do with document No. 2 issued under section 116 of the Act pertaining to proof of registration. If the new suit is filed, the plea of limitation will be available to the defendant. In the submission of the learned Senior Counsel, the applicant Company had come up with the application five years after cause of action arose and four years after suit. 7. If the new suit is filed, the plea of limitation will be available to the defendant. In the submission of the learned Senior Counsel, the applicant Company had come up with the application five years after cause of action arose and four years after suit. 7. The learned Senior Counsel drew attention to paragraphs 6, 9, 10, 14, 22, 24 and 25 and also the prayer portion and submitted that under section 29 of the Act, there must be an infringement i.e. there must be use of the mark with regard to goods whether selling or not. According to the learned Senior Counsel even in 1949 there was a dispute between the plaintiff and Mayer & Baker with regard to this Trade Mark and it was agreed to limit the list of goods to what was now sought to be substituted and therefore that it was not open to the applicant to plead oversight or error. The learned Senior Counsel sought to support his argument with the following decisions :- (a) A.K. GUPTA & SONS LIMITED Vs. DAMODARA VALLEY CORPORATION 1967 AIR(SC) 96, 1966 (1) SCR 796 , 1966 BLJR 340 (b) KAVIRAJ PANDIT DURGA DUTT SHARMA Vs. NAVARATNA PHARMACEUTICAL LABORATORIES 1965 AIR(SC) 980, 1965 (1) SCR 737 , 1965 KerLJ 690, 23 PTC 680 ) (c) VISHNUDAS TRADING AS VISHNUDAS KISHENDAS Vs. VAZIR SULTAN TOBACCO CO. LIMITED 1996 PTC 512 (SC) - Competent Trade Mark Cases) (d) ANGAMMAL Vs. MUTHUPECHIAMMAL 1976 (1) MLJ 161 ) (e) BHUBANESHWAR PATEL Vs. JANAK PATEL AND OTHERS 1976 AIR(Ori) 216 ) (f) The unreported judgment of a Division Bench of this Court in O.S.A. No. 51/95 and C.M.P.No. 3002/95 dated 25.08.1995. 8. The learned Senior Counsel also referred to Article 88 of the Limitation Act and submitted that an the event of the application being allowed, the amendment would date back to the suit, with the result, the plea of limitation would be lost to the defendant-Company. According to the learned Senior Counsel, substituting the description of goods is substituting goods themselves. The applicant/plaintiff-Company is trying to delete one type of goods and bring in another type. They are trying to re-write the entire plaint. They are trafficking in trade mark and this cannot be countenanced by the Court. According to the learned Senior Counsel, substituting the description of goods is substituting goods themselves. The applicant/plaintiff-Company is trying to delete one type of goods and bring in another type. They are trying to re-write the entire plaint. They are trafficking in trade mark and this cannot be countenanced by the Court. He prayed for rejection of plaint under Order 7 Rule 11 C.P.C. According to the learned counsel, the parties failed or succeeded by the statute. 9. The point for consideration is whether the amendment is to be allowed? 10. For a proper appreciation of the dispute, it is necessary to refer to the material averments in the pleadings, which are as follows: 11. The trade mark subject matter of the present suit is "OSSOPAN", one of the most popular products of the plaintiff- Company. Its main ingredient is calcium and it is prescribed mostly for pregnant women. The process of the formulation of the finished products, out of the bulk drug is invented, evolved and perfected by the plaintiff-Company and the product is sold in the form of tablets packed in foils and strips. The trade mark "OSSOPAN"(word perse) was registered in the plaintiff's name with effect from 13.5.1947 under Trade Marks Act, 1940 under No. 129304 and the registration has been renewed every 7 years and as on date, the mark is in the current force and it is valid for a further period upto 1999 as per the latest renewal. On 2.12.1952, the defendant-Company represented by the Chairman of the Board of Directors made certain proposals to the plaintiff-Company to become its executive agents for sale of its pharmaceutical products in India and there was a sole agency agreement by which T.T. Krishnamachari and Company, whose associate Company is the defendant-Company was appointed as the sole agents for India for the products of the plaintiff-Company. The agreement concerned only export from Switzerland and import to India of the finished products/formulations of the plaintiff-Company. On the basis of the permission granted by the Government of India in 1958, the defendant-Company was permitted by the plaintiff-Company to manufacture "OSSOPAN" as per their formula and market the same under trade mark "OSSOPAN" of the plaintiff-Company. The necessary bulk drug was imported from the plaintiff-Company, the defendant-Company used to indent annually for its raw-material requirements to enable it to manufacture "OSSOPAN" products and market the same till 1985. The necessary bulk drug was imported from the plaintiff-Company, the defendant-Company used to indent annually for its raw-material requirements to enable it to manufacture "OSSOPAN" products and market the same till 1985. After 1985, the defendant-Company was regular in sending its indent for the raw-material requirements of "OSSOPAN". For 1987-88, the indent was limited to 600 kgs. The plaintiff-Company was obliged to investigate and conduct a market survey for the competitive products in India. In the course of the enquiry it was found that in March, 1990, the defendant-Company were manufacturing "OSSOPAN" with the raw-material locally procured. It was estimated that the local "OSSOPAN" sales of the defendant-Company could generate ex-factory sales of plaintiff- Company of approximately 10, 000 kgs. per year accounting to the value of 689.000 Swiss Francs per year since 1986 and in terms of the Indian value it is about Rs. 1, 37, 80, 000/-. However, the pharmaceuticals analysis of the defendant-Company's products disclosed that there was deterioration in the quality of the product as compared to the product of the plaintiff-Company elsewhere and the previous one manufactured in India, with the use of the raw-materials imported from the plaintiff-Company, the defendant-Company tried to justify its not sourcing the raw- material from the plaintiff-Company on the ground that it was not commercially viable. In view of this, the plaintiff-Company by its letter dated 10.01.1992 called upon the defendant-Company to cease using the trade mark "OSSOPAN". This was repeated by another communication dated 25.9.1992. The immediate consequence of the above was that in November 1992, the defendant-Company filed a suit O.C.S. No. 1401 of 1992 against the plaintiff-Company in this Court under Section 120 of the Trade and Merchandise Marks Act and in O.A.No. 870 of 1992, the defendant-Company obtained ex-parte ad interim injunction restraining the plaintiff-Company from in any manner threatening the defendant-Company by notices, advertisements and circulars regarding the use of trade mark "OSSOPAN" by the plaintiff-Company. When admittedly, the plaintiff-Company is the owner of the trade mark "OSSOPAN" and when the defendant-Company had been using the mark all along with the consent of the plaintiff-Company and when once the consent was withdrawn on termination of the trade connection, further of the trade mark by the defendant-Company was an infringement. When admittedly, the plaintiff-Company is the owner of the trade mark "OSSOPAN" and when the defendant-Company had been using the mark all along with the consent of the plaintiff-Company and when once the consent was withdrawn on termination of the trade connection, further of the trade mark by the defendant-Company was an infringement. Till 1959, the plaintiff-Company had been exporting the finished product of "OSSOPAN" to India and the same had been marketed by the defendant-Company as such under section 96 of the Act, the defendant-Company should be deemed to warrant the genuineness of the trade mark and they could not claim any interest in the trade mark adverse to that of the plaintiff-Company. Again by virtue of the permission granted to the plaintiff-Company by the Government of India to manufacture "OSSOPAN" in India and by virtue of the defendant-Company having been authorised to manufacture the same in India with the raw-materials imported from the plaintiff-Company, the defendant-Company was given implied consent to apply the trade mark "OSSOPAN" on their finished product. The defendant-Company in the absence of any production under section 30 (1) (b) of the Act, the continued use of the trade mark "OSSOPAN" by the defendant-Company amounted to infringement of the plaintiff-company's registered trade mark under section 29 (1) of the Act and was liable to be injuncted under section 106 of the Act. The defendant-Company are also using the trade mark, "OSSOPAN" with the suffix 'R' in a circle and this indicated the factum of registration, the defendant-Company admittedly was not the registered proprietor as the trade mark stands in the name of the plaintiff-Company. The defendant-Company's continued use of trade mark, "OSSOPAN" with letter 'R' since the "Cease and Desist, Notice" was not only an infringement of registered trade mark under section 81 of the Act but also an offence under sections 77, 78, 79 and 81 of the Act. The defendant-Company have in the summer issue of their house journal "T.T.K. Spectrum", presented within the division T.T.K. Pharma Animal Welfare, a product in the name of "OSSOPAN"(Registered Vet.). The claim made is that if given to poultry, it promoted growth and weight gain in broilers and prevented leathery eggs, thin skinned eggs and falling of feathers. Veterinary products under the trade mark "OSSOPAN" was entirely outside the scope of the arrangements between the defendant-Company and the plaintiff-Company which began in 1952. The claim made is that if given to poultry, it promoted growth and weight gain in broilers and prevented leathery eggs, thin skinned eggs and falling of feathers. Veterinary products under the trade mark "OSSOPAN" was entirely outside the scope of the arrangements between the defendant-Company and the plaintiff-Company which began in 1952. The extension by the defendant-Company of the trade mark to veterinary product is also calculated to mislead the market, although the plaintiff-Company's registration extended to veterinary pharmaceutical products as well. The defendant-Company is therefore guilty of infringement and there is violation of Section 96 which mandated that the seller of the product to which a trade mark is applied should warrant that the mark is a genuine mark. The conduct of the defendant-Company amounted to the using the registered trade mark on goods in which the plaintiff-Company have no trade connection. It is a violation of the definition of the trade mark and destructive of the plaintiff-Company's registered trade mark. 12. According to the plaint, the cause of action arose on account of the following:- When the defendants continued to manufacture and sell "OSSOPAN" in 1986 even after they stopped importing "OSSOPAN" raw-material from plaintiff. Continued use of the Trade Mark even after the final "Cease and Desist Notice" dated 25.9.92. 13. On 6.11.92, when defendant filed C.S. No.1401 of 1992 under section 120 of the Trade and Merchandise Marks Act. (a) The prayer is for (a) the grant of a permanent injunction restraining the defendants by themselves, their servants, agents, their men or anyone claiming through them from manufacturing, marketing, distributing, offering and advertising for sale any "pharmaceutical veterinary and sanitary substances, children and invalid foods, plasters materials for bandaging, material for staffing tooth dental wax, disinfectant, preparations for killing weeds and disharming vermin" * , using the name "OSSOPAN" or any other name trade mark which is in any deceptively/phonetically similar to the plaintiff's registered trade mark "OSSOPAN" registered under registration No. 129304 in class-5, dated 13.05.1947 in Part-A on in any manner infringing the plaintiff's registered trade mark "OSSOPAN". (b) directing the defendants to render a true and faithful account of profits earned by them through the manufacture and sale of all the pharmaceutical goods and directing such profits to be paid to the plaintiff for infringement committed by the defendants. (b) directing the defendants to render a true and faithful account of profits earned by them through the manufacture and sale of all the pharmaceutical goods and directing such profits to be paid to the plaintiff for infringement committed by the defendants. (c) directing the defendants to surrender to the plaintiff all the cartons, containers, labels, packets and any other printed materials containing the impugned name "OSSOPAN" together with the block used for the purpose of printing the same for destruction. 14. The averments in the written statement are as follows:- The document No. 2 filed by the plaintiff along with the plaint is the legal use certificate with respect to the plaintiff's registered trade mark under No. 129304 in Class 5 along with the copy of the Trade Mark Journal page No. 873 in Journal No. 62 dated 1-10-1948 clearly shows that the trade mark OSSOPAN is registered under No. 129304 in Class 5 in respect of Organs Therapeutic preparations consisting of or containing osseous material of young animals. The plaintiff being fully aware that the trade mark OSSOPAN is registered only for a particular product, has sought relief of injunction in respect of a wide range of products, for which the mark is not registered and the goods in respect of which the plaintiff has sought an injunction is not even covered by registration No. 129304 in Class 5. The plaintiff and its trade mark attorneys M/s Remfry and Sagar were well aware since 6th July, 1949 when an undertaking was given by the plaintiff to May and Baker to confine the use and registration of the trade mark OSSOPAN to Organo-Therapeutic preparations consisting of or containing osseous material of young animals and therefore there cannot be any relief in respect of a vide specification of goods mentioned in the plaint. The relief prayed for in the plaint is beyond the scope of section 29 of the Act. The suit is therefore liable to be dismissed in limine. The plaintiff has not used the trade mark OSSOPAN in India since the registration on 13-5-1947 and has no bona fide intention to use the trade mark in India. There is no averment in the plaint that the trade mark OSSOPAN is used by the plaintiff in India or elsewhere in the world. The plaintiff has not used the trade mark OSSOPAN in India since the registration on 13-5-1947 and has no bona fide intention to use the trade mark in India. There is no averment in the plaint that the trade mark OSSOPAN is used by the plaintiff in India or elsewhere in the world. The trade mark OSSOPAN registered under No. 129304 in Class 5 is only a paper registration and ought to be removed from the Register of Trade Marks. The plaint sworn to by one Rajendra kumar, who does not hold a power of attorney and who is no longer employed in M/s Remfry and Sagar, is not proper and has to be dismissed in limine. On the merits of the case it is stated that the plaintiff does not carry on any business in India and has no manufacturing or sales activities in India. The sales figures submitted by the plaintiff do not relate to the sale of OSSOPAN PRODUCTS in India. The plaintiff has never sold a single tablet bearing the trade mark OSSOPAN in India. The plaintiff has no patent still valid and subsisting in respect of its alleged invention of OSSOPAN formulation. The defendant has filed a rectification petition being No.CAL-653 for removal of trade mark OSSOPAN and the rectification petition is pending before the Registrar of Trade Marks, Calcutta. A continuous period of five years and longer has elapsed, during which the trade mark OSSOPAN has not been used by the plaintiff in India. The trade mark OSSOPAN is wrongly remaining on the Register of Trade Marks and is invalid ab initio and ought to be rectified under sections 46 and 56 of the Act. The defendant company does not have any office at Lingi Chetty Street, Madras. The defendant has been involved in the business of pharmaceutical and medicinal preparations for the last about 30 years and has sales network covering the entire country. The defendant company is also exporting medicinal and pharmaceutical preparations earning valuable foreign exchange for the country. The defendant has been using the trade mark OSSOPAN in respect of calcium supplements normally used for pregnant ladies for the last about 30 years. The defendant's products bearing the trade mark OSSOPAN are sold extensively all over India. The sale figures run to several lakhs of rupees. The defendant has been using the trade mark OSSOPAN in respect of calcium supplements normally used for pregnant ladies for the last about 30 years. The defendant's products bearing the trade mark OSSOPAN are sold extensively all over India. The sale figures run to several lakhs of rupees. By virtue of long, extensive, continuous use, the trade mark OSSOPAN has become distinctive of and is exclusively identified with the defendant's preparations. The plaintiff has never objected to the use of the trade mark OSSOPAN by the defendant and has in fact acquiesced in the use of trade mark OSSOPAN by the defendant. The name of the plaintiff does not appear anywhere in the packing of the product, literature or any other material relating to the sale of OSSOPAN products manufactured and sold by the defendant. The sole selling agency agreement entered between T.T. Krishnamachari and Co. and the plaintiff is denied. The defendant in any event is not a party to the said sole selling agency agreement. The alleged permission given by the Government of India to manufacture medicinal preparations under the trade mark OSSOPAN is denied. In spite of notice the plaintiff has not produced the said letter. There is no agreement subsisting between the plaintiff and the defendant. The import of raw materials should not be an issue regarding the use of trade mark OSSOPAN. The market survey report produced by the plaintiff is a fictitious one. The defendant's product manufactured under the trade mark OSSOPAN is of a superior quality and not of inferior quality as alleged by the plaintiff. The plaintiff has acquiesced to the use of the trade mark OSSOPAN by the defendant and is estopped from raising any objection. The letters dated 10th January and 25th September, 1992 were issued by the plaintiff in retaliation to the defendant's refusal to import raw material from the plaintiff and were issued out of business rivalry. The plaintiff was not used the trade mark in India for a continuous period of 61 months prior to the date of filing of the rectification petition being No. CAL-653 pending before the Registrar of Trade Marks Calcutta, and the plaintiff's registration No. 129304 in Class 5 ought to be removed from the Register of Trade Marks. The provisions of section 96 of the Act have no relevance to the present proceedings. The provisions of section 96 of the Act have no relevance to the present proceedings. The plaintiff has misinterpreted the provisions of section 31(b) of the Act with a view to mislead the court. The defendant has never made 'illegal' use of trade mark OSSOPAN. The plaintiff has no honest and bonafide intention to use the trade mark OSSOPAN in India. The defendant has not committed any infringement within the meaning of section 29(1) and section 106 of the Act. The defendant company has applied for registration of trade mark OSSOPAN under Application No. 583683 dated 30-1-1992 in Class 5 and the application is pending before the Registrar of Trade Marks, Madras. Due to a clerical error, the letter 'R' in a circle was painted above the mark OSSOPAN in cartons/strips and packaging materials used by the defendant. The defendant has stopped using the letter 'R' in a circle. The defendant denies having committed any offence under section 81 of the Act. The provisions of sections 77 to 79 and 81 of the Act cannot be invoked in a suit for infringement under section 29 of the Act. The defendant is also manufacturing veterinary formulations under the trade mark OSSOPAN for the last over 10 years. The plaintiff by his own conduct is estopped from using the trade mark OSSOPAN. The trade mark OSSOPAN is distinctive of and is exclusively identified by Doctors, Traders, Chemists, Druggists, Manufacturers and consuming public with the defendant and nobody else. The cease and desist notice issued by the plaintiff to the defendant amounts to groundless threat and the defendant has instituted C.S. No. 1401/92 under Section 120 of the Act for using groundless threats against the defendant. The interim injunction granted by the learned single Judge is still in force. The balance of convenience is in favour of the defendant and against the plaintiff. The defendant is the prior user of the trade mark OSSOPAN in India, the plaintiff is guilty of inordinate delay in filing the present suit. Since 1986 the defendant is not importing raw materials from the plaintiff and the plaintiff not having filed any suit for more than 7 years, is not entitled to any relief. The plaintiff has failed to prove reputation or goodwill enjoyed by its trade mark OSSOPAN in India or elsewhere in the world. Since 1986 the defendant is not importing raw materials from the plaintiff and the plaintiff not having filed any suit for more than 7 years, is not entitled to any relief. The plaintiff has failed to prove reputation or goodwill enjoyed by its trade mark OSSOPAN in India or elsewhere in the world. Except for getting the trade mark registered, the plaintiff has not made any attempt to use the trade mark. A registration without intention to use the trade mark is against the basic structure and fundamental principles of the Act. The plaintiff has played found on the Registrar of Trade Marks and has obtained registration by suppressing material facts. The defendant therefore prayed to dismissal of the suit. 15. Order 6 Rule 17 of the Code of Civil Procedure runs as follows: "The court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner and on such terms as may be just, and all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties." * In interpreting the provisions for amendment of pleadings, the Bombay High Court in Kisandas Rupchand and another Vs. Rachappa Vithoba Shilwant and others 33 ILR(Bom) 644 ) observed as follows: "All amendments ought to be allowed, at any stage of the proceedings, 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 question in controversy between the parties. Amendments 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 ultimate test therefore still remains the same: can the amendment be allowed without injustice to the other side, or can it not ?" * This classic exposition of law by BATCHELOR, J. has been approved by the Supreme Court in several of its decisions and has been reiterated time and again. 16. In Pirgonda Hongonda Patil Vs. Kalgonda Shidgonda Patil and others the plaintiff obtained a decree for possession against A, but was obstructed by B in obtaining possession of the suit properties in execution. His application under Order 21 Rule 97 of the Code of Civil Procedure was dismissed on 12-4-1947 and on 12-3-1948 he instituted a suit under Order 21 Rule 103 C.P.C. against A and B. Apart from the decree obtained in the earlier suit, no particular averments were made in the plaint as to the facts or grounds on which the plaintiff based his title to the suit properties as against B. On 29-3-1950 the plaintiff made an application for permission to give further and better particulars of the claim made in the plaint. The application was rejected by the trial court, but was allowed in appeal by the High Court. It was contended that the High Court should not have exercised its power to allow amendment because (1) the period of limitation for the suit had already expired before the date on which the application for amendment was made and (2) the attention of the plaintiff to the defect in the original plaint had been drawn by an application filed on behalf of B on 20-11-1948 and in spite of that application, no amendment was asked for till 29-3-1950. The Supreme Court held that (1) the period of limitation for the suit under Order 21 Rule 103 C.P.C. had expired on 12-4-1948 long before B made his application on 20-11-1948 pointing out the defect in the plaint; the application of B had not the merit of beneficent purpose and in fact B had clearly said that no permission should be given to the plaintiff to make an amendment thereafter, and (2) the amendment did not really introduce a new case and the application filed by B himself shows that he was not taken by surprise; nor did he have to meet a new claim set up for the first time after the expiry of the period of limitation. 17. In L.J. Leach and Co. 17. In L.J. Leach and Co. Ltd. and another V. Messers Jardine Skinner and Co. the Supreme Court observed as follows : "It is no doubt true that 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. But that is a factor to be taken into consideration in exercise of the discretion as to whether amendment should be ordered and does not affect the power of the court to order it, if that is required in the interests of justice." 18. In A.K. Gupta and Sons Ltd. V. Damodar Valley Corporation the question for amendment arose in the following manner : "A contract of work contained a clause to the effect that in case of an increase in the prevailing labour rate of more than 10%, the contractor would be entitled to charge proportionate increased rates. Subsequent to the making of the contract, there was an increase in labour rate by 20% and a dispute arose between the parties as to whether under the clause the contractor was entitled to whole amount or only part of it. As the sole difference between the parties was about the interpretation, the contractor filed a suit against the respondent only claiming a declaration that on a proper interpretation of the clause he was entitled to an enhancement of 20% over the tendered rates. Contractor's interpretation of the clause was challenged though no material fact was disputed. The suit was decreed, but in appeal it was held to be not maintainable in its form in view of section 42 of the Specific Relief Act. The appellant sought leave of the High Court to amend the plaint by adding an extra relief for a decree for the contract money or such other amount as was to be found due on proper account being taken." * The High Court having refused to grant the amendment the matter went to the Supreme Court. The Supreme Court held as follows: "In the matter of allowing amendment of pleading the general rule is that a party is not allowed by amendment to set up a new case or a new cause of action particularly when a suit on the new cause of action is barred. The Supreme Court held as follows: "In the matter of allowing amendment of pleading the general rule is that a party is not allowed by amendment to set up a new case or a new cause of action particularly when a suit on the new cause of action is barred. Where, however, the amendment does not constitute the addition of a new cause of action or raise a different case, but amounts merely to a different or additional approach to the same facts the amendment is to be allowed even after expiry of the statutory period of limitation... The expression 'cause of action' in this context does not mean every fact which is material to be proved to entitle the plaintiff to succeed. The expression only means a new claim made on a new basis constituted by new facts. The words 'new case' means new set of ideas. Thus no amendment would be allowed to introduce new set of ideas to the prejudice of any right acquired by any party by lapse of time." * 19. In Nichhalbhai Vallabhai and others V. Jaswantlal Zinabhai and others the Supreme Court observed that, "the object of the rule for allowing amendments to the plaint was to avoid multiplicity of suits. If the amendments were refused, the plaintiff would have to bring another suit. It is a well known canon of interpretation that it is the duty of the court not to confine itself to the force of a particular expression but to collect the intention from the whole instrument taken together." * The Supreme Court held that the High Court in that case was right in taking the view that certain words were put in the plaint by mistake and inadvertence. In such circumstances, the court should exercise the 'discretion under Order 6 Rule of the Code of Civil Procedure. 20. In Gajanan Jaikishan Joshi V. Prabhakar Mohanlal Kalwar the Supreme Court held as follows : "A amendments 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. 20. In Gajanan Jaikishan Joshi V. Prabhakar Mohanlal Kalwar the Supreme Court held as follows : "A amendments 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. Though 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, but that is a factor to be taken into account in exercise of the discretion as to whether the amendments should be ordered in the interest of justice." 21. In Kenchegowda (since deceased) by Legal Representatives v. Siddegowda @ Motegowda (1994 (2) SCC 294 ) the Supreme Court held that when causes of action and reliefs are different, no amendment can be allowed. 22. In C.S. Company and others v. Kerala State Electricity Board the suit was filed by the respondent for settlement of accounts on the basis of contract seeking decree jointly and severally against defendants or against their estate for amount due and for declaration that the respondent was entitled to recover all the damages from the defendants and their assets when the same were ascertained. An application was filed under Order 6 Rule 17 of the Code of Civil Procedure for amendment of plaint for converting the suit into one for recovery of quantified amount of damages based upon the contract. It was held that there was no change of cause of action nor was there introduction of any new cause of action after the bar of limitation. 23. In Angammal Vs. Muthupechiammal Meenal 1976 (1) YLJ 161 cited by the learned Senior Counsel for the respondent, in the plaint as originally filed the plaintiffs sought for a declaration that they were entitled to an easementary right over a particular portion of the suit house to a particular length. Later, they sought for an amendment stating that no proper instructions were given to the advocate at the time when the original plaint was drafted and they wanted the relief of mandatory injunction directing the defendant to remove a wall on that portion of the property referred to in the original plaint and for a declaration that they are the owners of the pathway on the suit site. Amendment was allowed by the lower court stating that it would avoid multiplicity proceedings. RAMAPRASADA RAO, J., as has been was, held as follows: "Invocation of Order 6 Rule 17 of Code of Civil Procedure is possible only if the substance of the relief asked for in the original pleading is maintained, though in a different form it is sought to be corrected so as to suit the convenience of the litigant. In a case, however, when the amendment sought for by the plaintiff would alter the very foundation of the claim and the said amendment prima facie is distinct, separate and independent of the original relief asked for, then it would not come within the purview of amendment of pleading at all. On the other hand, it would be a substitution of a relief which is different and not asked for in the original plaint." The learned Senior Advocate lays stress on the following passage in the said judgment: ".....in cases where, under the guise of an amendment, a distinct and separate prayer is sought to be introduced in the pleading, it would not be an amendment at all, but it would be the setting up of a new case, not thought of and not even pleaded by the person concerned. ........Particularly when a plaint is sought to be amended and when the relief sought for appears, on the face of it, to be an after-thought and totally disjunct from the prayer in the original plaint, then such an application for amendment ought not to be countenanced at all." 24. In my opinion, this case really does not support the case of the respondent at all. What is sought to be amended in the present case is the description of the product to be in conformity with the description given in the registration certificate and nothing more. In fact, what is sought for is a lesser relief than what was originally contemplated. 25. The next decision cited by the learned Senior Counsel is Bhubaneshwar Patel Vs. Janak Patel and others 1976 AIR(Ori) 216 ). In this case, the plaintiffs originally claimed by purchase, but subsequently sought amendment claiming title by inheritance. In fact, what is sought for is a lesser relief than what was originally contemplated. 25. The next decision cited by the learned Senior Counsel is Bhubaneshwar Patel Vs. Janak Patel and others 1976 AIR(Ori) 216 ). In this case, the plaintiffs originally claimed by purchase, but subsequently sought amendment claiming title by inheritance. The court held that the amendment sought for would alter the very foundation of the claim and introduce a distinct and separate cause of action converting the suit into another of a total by different character necessitating a fresh trial from the beginning. Expediency of avoiding multiplicity of proceedings is no ground to allow such an amendment. The court observed that the facts were available to the plaintiffs even when the suit was instituted, but not mentioned in the original plaint. It may also be noticed that the suit was dismissed by the trial court. Against the decision an appeal was filed and the same was pending for two years and at that stage appeal the plaint was sought to be amended claiming title by inheritance. In my view, the court rightly negatived the relief for amendment. 26. The learned Senior Counsel also relied on Article 88 of the Limitation Act. Under Article 88 the period of limitation is three years for compensation for infringing copyright or any other exclusive privilege from the date of infringement. A right to a trade mark or a trade name is a privilege and rights to trade marks and trade names are exclusive rights. It may immediately be stated that there is no question of limitation involved in the present case. On the dated the application was filed in April, 1994 the period of limitation had not expired, and no valuable right had accrued to the respondent by reason of any alleged delay. 27. The learned Senior Advocate also relied on Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories and Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd. In the first of the two decisions, the difference between action for gassing off and action for infringement is printed out. The action for infringement is a statutory remedy conferred on proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to the goods. Ltd. In the first of the two decisions, the difference between action for gassing off and action for infringement is printed out. The action for infringement is a statutory remedy conferred on proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to the goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but it is the sine quo non in the case of an action for infringement. In the second decision cited, there was registration of trade mark 'Charminar' in favour of the respondent in relation to manufactured tobacco. Use of the said marks was made in relation to cigarettes. The appellant wished to register the same mark for 'zarda & quiwam'. The Registrar of Trade Marks refused registration after opposition by the respondent. The appellant applied for rectification of respondent's mark contending that the mark should be registered only in relation to cigarettes. Rectification was allowed. Appeals were alleged by a learned single Judge. The Division Bench upheld the judgement of the learned single Judge. The Supreme Court held that, "If a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other articles which also fall under manufacturer broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. The registration is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. Otherwise, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark." So viewing the Supreme Court restored the order of rectification. 28. The learned Senior Counsel also relied on an unreported judgment dated 25-8-1995 of a Division Bench of this Court in O.S.A. No. 51/95 and C.M.P.No. 3002/95 Ciba Geigy Ltd. and another Vs. 28. The learned Senior Counsel also relied on an unreported judgment dated 25-8-1995 of a Division Bench of this Court in O.S.A. No. 51/95 and C.M.P.No. 3002/95 Ciba Geigy Ltd. and another Vs. Croslands Research Laboratories Ltd., where also the distinction between infringement and passing off has been set out. It is stated that an action for passing off is a common law remedy and an action for infringement is a statutory remedy. The Bench relied on Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. 29. We are not presently concerned with the merits of the respective claims of the parties. What we are concerned with is whether the plaintiff must be allowed to amend the prayer in the plaint to be in conformity with the plaint document No. 2. Mr. U.N.R. Rao, Learned Senior Counsel for the plaintiff brought to my notice an unreported decision in Application No. 3404/86 in C.S. No. 276/86 Cormandal Fertilizers Ltd. v. Coromandal Cements Ltd. by a learned single Judge of this Court. In that case, the prayer for passing off was originally struck off as the office objected. There were sufficient averments made in the plaint already to seek the relief in respect passing off. The application for amendment was filed seeking the prayer relating to passing off also. The application was allowed and the learned Judge observed that the power to amend the plaint should be liberally granted unless irreparable loss is caused to the defendant. The reasoning of the learned Judge was also that under Order 2 Rule 2 of the Code of Civil Procedure there would be a bar for a fresh suit. 30. According to the written statement there is a wide specification of goods mentioned in the plaint, which is not mentioned in document No. 2. In my view, by seeking the amendment the plaintiff is not seeking to widen the scope, but, on the contrary, only seeking to restrict the scope. The relief prayed for by the plaintiff is not beyond the scope of section 29 of the Act. The defendant is also not taken by surprise. The document No. 2 was already filed alongwith the plaint. The mistake was by the learned Counsel for the plaintiff. There is also no question of limitation involved. The relief prayed for by the plaintiff is not beyond the scope of section 29 of the Act. The defendant is also not taken by surprise. The document No. 2 was already filed alongwith the plaint. The mistake was by the learned Counsel for the plaintiff. There is also no question of limitation involved. At the hearing of application for injunction the learned Senior Counsel for the defendant drew the attention of the learned Counsel for the plaintiff to the contents of document No. 2. This was on 30-3-1994. Immediately thereafter steps were taken to amend the plaint on 13-4-1994. In my view, the present case is on a stronger ground than Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil and others. In that case, the contention was that even after the defect was pointed out, the plaintiff had taken his own time to seek amendment after more than a year. In the present case, the defect was pointed out on 30-3-1994. The amendment application was filed immediately thereafter on 13-4-1994. 31. In a recent decision Muthammal V. Tharaburati and others 1997 (1) MLJ 560 SATHASIVAM, J. after referring to a number of decisions of the Supreme Court and this Court, held that the general rule is that a party is not allowed by amendment to set up a new case of a new cause of action, particularly open a suit on a new cause of action would be barred. 32. In A.K. Gupta and Sons Ltd. V. Damodar Valley Corporation the following decisions have been referred to : (1) Charan Das V. Amir Khan (47 Ind. App. 255 = 1921 AIR(PC) 50 ) (2) Cropper V. Smith ( 1884 (26) ChD 700 ) (3) L.J. Leach & Company Ltd. v. Jardine Skinner and Co. 1957 AIR(SC) 357, 1957 SCJ 313, 1957 (1) SCR 438, 59 BomLR 395, 1957 MPLJ 497, 1957 All(LJ) 794 and (4) Robinson v. Union Property Corporation Ltd. 1962 (2) AllER 24 for the proposition that the object of courts and rules of procedure is to decide the rights of parties and not to punish them for their mistaken. Punishing for mistakes is of course not administration of justices. 33. Punishing for mistakes is of course not administration of justices. 33. In Jai Jai Ram Manohar Lal v. National Building Material Supply Gurgaon the Supreme Court observed as follows : "A party cannot be refused to relief merely because of some mistake, negligence, inadvertence or even infraction of the rules of procedure. The court always gives leave to amend the pleading of a party, unless it is satisfied that the party applying was acting mala fide, or that by his blunder, caused injury to his opponent which may not be compensated for by an order of costs. There is no rule that unless in an application for amendment of a plaint, it is expressly averred ross stitch or crisscross pattern, that it is being used by the petitioner and its parent and predecessor companies since at least 1905, that it is registered as a mark in its name under the Trade Marks Act and that it is spending big sums to keep the mark alive and within the notice of the public. 31. LUX according to the dictionaries is a unit of illumination. It has no other meaning. It may even be taken to be a coined word like Kodak or Dalda. The manner in that the error, omission or misdescription is due to a bona fide mistake, the court has no power to grant leave to amend the plaint." Bearing but these principles in mind. I am of the view that there has been a bona fide mistake on the part of the plaintiff in not confining its prayer to the contents of document No. 2. There is a specific allegation to the effect that there has been bona fide mistake unlike in the case of Jai Jai Ram Manohar Lal where it was not expressly averred that the error, omission or misdescription was due to bona fide mistake. 34. I have already held, that there is no question of limitation involved in the present suit and there is also no new cause of action sought to be set up by means of an amendment. Document No. 2 in already on record and what is sought to be done is to have the prayer to be in tune with the contents of document No. 2. Thus, the amendment prayed for deserves to be allowed. Document No. 2 in already on record and what is sought to be done is to have the prayer to be in tune with the contents of document No. 2. Thus, the amendment prayed for deserves to be allowed. However, having regard to the fact that both the Counsel for the plaintiff and the Power of Attorney Holder of the plaintiff had overlooked the contents of document No. 2 and allowed the plaint to be filed seeking and prayer much wider in scope, the defendant company has to be compensated by way of costs. Accordingly, I direct the plaintiff to pay a sum of Rs. 10, 000/- as costs to the respondent as a condition for allowing the application. The amendment is allowed on the above terms. The costs shall be paid within a period of four weeks from today. Call after four weeks.