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Gujarat High Court · body

2009 DIGILAW 697 (GUJ)

Dhara Seeds v. Gujarat Farm Seeds

2009-11-04

K.A.PUJ

body2009
Judgment K.A. Puj, J.—The appellant - ori. defendant has filed this Appeal From Order under Order-43 Rule-1 of Civil Procedure Code challenging the order passed by the learned Additional District Judge and Presiding Officer, Fast Track Court No.7, Vadodara below Application Ex.5 in Regular Civil Suit No.10 of 2007 on 27.3.2008 whereby the learned trial Judge granted interim injunction in favour of the present respondent - ori. plaintiff and the appellant was restrained from manufacturing, marketing, selling, printing and publishing the trade mark “GUWAR NEELIMA-51” or any other trade mark which is identical, same or similar to the trade mark “GUWAR NEELIMA-51” of the present respondent - ori. plaintiff. 2. This Court has issued notice for final disposal on 23.4.2008. Heard Mr. Tejas M. Barot, learned Advocate appearing for appellant and Mr. R.R. Shah, learned Advocate appearing for respondent. 3. The main ground of challenge of the order passed by the learned trial Judge is that the suit itself is not maintainable and yet the interim relief was granted. For this purpose, Mr. Barot has submitted that before filing of present suit the respondent - ori. plaintiff has already filed earlier suit being Regular Civil Suit No.7 of 2004 in the Court of learned District Judge, Kheda and the said suit was in respect of same cause of action and relief. The said suit was subsequently renumbered as Suit No.15 of 2006 on its transfer to the Court of learned District Judge, Anand. The said suit was in respect of same cause of action and relief and it was unconditionally withdrawn by the respondent - plaintiff vide Ex.33. He has, therefore, submitted that in view of withdrawal of earlier suit, fresh suit for the same cause of action and same relief was not maintainable. He has further submitted that against the order passed in the earlier suit, the appellant preferred Appeal from Order No.12 of 2006 before this Court wherein stay was granted against the implementation of the order passed by the learned trial Judge in earlier suit. He has, therefore, submitted that once this Court stayed the order granting interim injunction, with a view to circumventing the said order of this Court, the respondent - ori. plaintiff could not have been permitted to file second suit in respect of the same subject matter. 4. Mr. He has, therefore, submitted that once this Court stayed the order granting interim injunction, with a view to circumventing the said order of this Court, the respondent - ori. plaintiff could not have been permitted to file second suit in respect of the same subject matter. 4. Mr. Barot further invited Court’s attention to the provisions of Order-23, Rule-1 which is in respect of withdrawal of suit. He has submitted that the Order-23, Rule-1 permits withdrawal of suit by the plaintiff. However, Clause (b) of Sub-rule (4) of Rule-1 precludes institution of fresh suit in respect of same subject matter, where the suit is withdrawn without prior permission of the Court. In view of the said provision, when the institution of the suit for the same subject matter has been barred by law, it was not open to the learned trial Judge to entertain Application ex.5 and to pass the impugned order. 5. In support of his submissions Mr. Barot relied on the decision of Apex Court in the case of Vallabh Das vs. Dr. Madan Lal and Others, reported in 1970 (1) SCC 761 , wherein it is held that the Order XXIII, Rule-1, Code of Civil Procedure empowers the Courts to permit a plaintiff to withdraw the suit brought by him with liberty to institute a fresh suit in respect of the subject-matter of that suit on such terms as it thinks fit. The term imposed on the plaintiff in the previous suit was that before bringing a fresh suit on the same cause of action, he must pay the costs of the defendants. Therefore, one has to see whether that condition governs the institution of the present suit. For deciding that question one has to see whether the suit from which this appeal arises is in respect of the same subject-matter that was in litigation in the previous suit. The expression “subject-matter” is not defined in the Civil Procedure Code. It does not mean property. That expression has a reference to a right in the property which the plaintiff seeks to enforce. That expression includes the cause of action and the relief claimed. Since in the present suit the same cause of action and relief is prayed for, it is not maintainable in view of the ratio laid down by the Apex Court in the above above decision. 6. Mr. That expression includes the cause of action and the relief claimed. Since in the present suit the same cause of action and relief is prayed for, it is not maintainable in view of the ratio laid down by the Apex Court in the above above decision. 6. Mr. Barot further relied on the decision of this Court in the case of Narayan Jethanand, since deceased by his heirs & legal representatives vs. Asapuri Vijay Saw Mill, reported in 1995 (1) GLH 1147 , wherein it is held that when the plaintiff withdraws the suit without permission of the Court, he is precluded from instituting a fresh suit in respect of the same subject-matter under Order-23, Rule-4 of the Code and against the same defendant. This rule is mandatory. Therefore, the plaintiff cannot thereafter institute a suit for enforcing what was the subject-matter of the former suit. The subject-matter means series of acts or transactions alleged to exist giving rise to the relief claimed. Therefore, in such a situation, when the former suit is withdrawn unconditionally or without any order granting leave to withdraw the suit with liberty to bring fresh suit in the circumstances would obviously operate a bar to a fresh suit, as contemplated by the provisions of Order-23, Rule-4. 7. Mr. Barot further made the submission that the respondent - ori. plaintiff has failed to prove that the appellant has entered into series of transactions. Merely on the basis of one isolated transaction interim relief cannot be granted. He has further submitted that on the basis of evidence produced by the plaintiff before the trial Court it is difficult for the trial Court to come to the conclusion that the appellant has committed infringement of the plaintiff’s Trade Mark. 8. In support of his submission Mr.Barot relied on the decision of the Delhi High Court in the Case of Glen Raven Mills Inc. vs. Vaspar Concepts Pvt. Ltd., & Anr. Reported in 1995 PTC (15) 392, wherein it is held that, to give jurisdiction to the Court in a case of passing off, it is necessary to prove that the supply made by the defendant at a particular place was on a commercial scale. There should have been direct transaction of sale and purchase between the defendant and a distributor or a wholeseller or a retailer and such transactions should be of commercial proportion. 9. There should have been direct transaction of sale and purchase between the defendant and a distributor or a wholeseller or a retailer and such transactions should be of commercial proportion. 9. Based on the above submissions, Mr. Barot submitted that the impugned order passed by the learned trial Judge requires to be quashed and set aside and the interim injunction granted by the trial Court is required to be vacated. 10. As against the submissions of Mr. Barot, learned advocate Mr. R.R. Shah appearing on behalf of respondent - ori. plaintiff has submitted that cause of action is different in earlier suit as well as in the present suit. He submitted that after filing the earlier suit, the respondent has got the registration of his Trade Mark and the said trade Mark has been infringed by the appellant and hence the present suit is filed. He has further submitted that in respect of Trade Mark matters, provisions of Order-2, Rule-2, or Order-23, Rule-1 of the Civil Procedure Code cannot be invoked. For this purpose he relied on the decision of the Apex Court in the case of M/s. Bengal Waterproof Ltd. vs. M/s. Bombay Waterproof Manufacturing Company and Anr., reported in AIR 1997 SC 1398 . Mr. Shah has also relied on the decision of this Court in the case of Kachchh Kala vs. New Kutch Kala, decided on 23.11.2005 in First Appeal No. 5061 of 1998. He has further submitted that the respondent - ori. plaintiff has produced all necessary evidence before the trial Court and on the basis of these documents the learned trial Judge has come to the conclusion that the plaintiff as well as defendant’s Trade Mark are in the field of grain seeds quoting the name of ‘GUWAR’, as one of the grain. The plaintiff had connected GUWAR with NEELAM-51 whereas the defendant had adopted the word NEELIMA-51. These are the letters printed in English. The background is also in pink colour. The learned trial Judge has also pointed out certain similarities between these two Trade Marks and has come to the conclusion that the plaintiff has established their prima facie case and since the plaintiff has obtained a certificate of registration, plaintiff deserves the protection by the order of the Court. The background is also in pink colour. The learned trial Judge has also pointed out certain similarities between these two Trade Marks and has come to the conclusion that the plaintiff has established their prima facie case and since the plaintiff has obtained a certificate of registration, plaintiff deserves the protection by the order of the Court. He has, therefore, submitted that this finding is arrived at by the trial Court on the basis of documentary evidence produced and hence it cannot be said that the impugned order was passed by the trial Court without any evidence. He has, therefore, submitted that no interference is called for in the order passed by the trial Court. 11. Having heard learned Advocates appearing for the respective parties and having gone through their rival contentions in light of the statutory provisions as well as decided case law on the subject the Court is of the view that the earlier suit was filed by the plaintiff against the same respondent and more or less subject-matter was also same. In view of the decision of the Apex Court in the case of M/s. Bengal Waterproof Ltd., (Supra) it cannot be said that the plaintiff is precluded from filing fresh suit against the defendant of the same cause of action. It is observed by the Apex Court in the above decision that where the cause of action for the first suit was based on the infringement of plaintiff’s trade mark by the defendant till the date of the suit and the grievance regarding passing off of the defendants’ goods as if they were plaintiff’s goods was also confined to the situation prevailing on the date of the earlier suit, the second suit in which plaintiff’s grievance was regarding the continuous acts of infringement of its trade mark and the continuous passing off action on the part of the defendants, subsequent to the filing of the earlier suit and which had continued on the date of the second suit would not be barred under Order-2 Rule-2(3). Such infringement of a registered trade mark carried on from time to time would give a recurring cause of action to the holder of the trade mark to make a grievance about the same and similarly such impugned passing off actions also would give a recurring cause of action to the plaintiff to make a grievance about the same and to seek appropriate relief from the Court. In cases of continuous causes of action or recurring causes of action bar of Order-2, Rule-2, Sub-rule (3) cannot be invoked. As act of passing off is an act of deceit and tort every time when such tortious act or deceit is committed by the defendant the plaintiff gets a fresh cause of action to come to the Court by appropriate proceedings. Similarly infringement of a registered trade mark would also be a continuing wrong so long as infringement continues. Therefore, whether the earlier infringement has continued or a new infringement has taken place cause of action for filing a fresh suit would obviously arise. It was more so when earlier suit was disposed of as technically not maintainable in absence of proper reliefs. In such a case for all times to come in future, defendant of such a suit cannot be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts. 12. In view of the above categorical observations by the Apex Court, the Court is of the view that even the bar of Order-23, Rule-4 would not come in the way of the plaintiff to file a fresh suit as the infringement of the trade mark continued at the time when the fresh suit was filed. The earlier suit was disposed of as withdrawn only because of technical ground without granting or considering the relief claimed for by the plaintiff in that suit. The observations made by the Apex Court clearly apply to the facts of the present case and hence it cannot be said that the subsequent suit filed by the plaintiff is hit by the provisions contained in Order-23, Rule-4 of the Civil Procedure Code simply because the plaintiff has not sought for liberty to file a fresh suit. The observations made by the Apex Court clearly apply to the facts of the present case and hence it cannot be said that the subsequent suit filed by the plaintiff is hit by the provisions contained in Order-23, Rule-4 of the Civil Procedure Code simply because the plaintiff has not sought for liberty to file a fresh suit. So far as granting of interim relief is concerned, the trial Court has exercised its discretion on the basis of documentary evidence available with the trial Court which cannot be said to be perverse or without any application of mind. The Court, therefore, does not see any justification to cause for any interference in the order passed by the trial Court. 13. The Appeal From Order, therefore, fails. Since the Appeal is dismissed the Civil Application does not survive and it is accordingly disposed off. 14. The observations made in the order of the trial Court or in this order by the Court are of prima facie nature and the learned trial Judge would dispose of the suit without being influenced by the same and on the basis of the evidence that may be led by the parties.