Plaint Alleging Passing Off Can Be Amended To Include Remedy Against Trademark Infringement Where Cause Of Action Is Same: Karnataka HC

A single judge bench of Justice Sachin Shankar Magadum allowed the application filed by Milaap Social Ventures, seeking amendment of its plaint to include remedy of trademark infringement by the respondents, Google India and Impact Guru Technology Ventures (respondent No.2), by using the mark 'MILAAP' in its keywords and metatags.

The bench said, "Merely because the suit for passing off is covered under the common law and a cause of action for infringement of trademark is governed under special statute, that in itself cannot be a ground to decline the leave to the plaintiffs to amend the plaint."

Case Details:

The petitioners/plaintiffs instituted a suit seeking perpetual injunction against the respondents/defendants from passing off its trademark 'MILAAP'.

It is alleged that petitioner first became aware that Impact Guru is using its mark 'MILAAP' to divert traffic to its own website crafted and designed by Google. The petitioner therefore claimed that they were compelled to issue cease and desist notice to Impact Guru against using its mark as keyword and to stop passing off.

Pending consideration of the suit, the petitioner's mark 'MILAAP' came to be registered. It is in this context, the petitioners filed an application under Order 6 Rule 17 seeking amendment of the plaint and to include remedy of trademark infringement.

The trial court rejected the application on the ground that if the defendants are guilty of trademark infringement, the petitioners/plaintiffs are entitled to file separate suit for infringement of trademark based on a new cause of action.

Findings:

The bench primarily relied on the judgment of the Apex Court in the case of Sampath Kumar vs. Ayyakannu & Another, (2002) 7 SCC 559, wherein it was held that if amendment application is resisted only on the ground that plaintiff can maintain a separate suit, then there should be no impediment in allowing the amendment to avoid multiplicity of proceedings.

It said, "The primary issue involved in both the cases is on account of wrong of the defendants. Therefore, the cause of action for maintaining the suit on account of passing off or infringement is virtually based on the same set of facts. Therefore, if plaintiffs, post registration of trademark, intend to amend the plaint and incorporate the relief on account of infringement, at the most it amounts to enlargement of that wrong which is initially filed alleging passing off."

Noting that the action for passing off is brought by a user of trademark when the trademark is not registered, the bench said,

"The action for infringement on the same principle lies when the trademark is registered. If the proposition and contention propagated by the defendants is to be accepted and if plaintiffs have to be relegated to file a separate suit, it would only lead to multiplicity of proceedings between the parties which should be avoided."

Then it held,

"If the cause of action for infringement and passing off actions are substantially identical and same in law and both the reliefs are virtually based on the same fundamental idea, if plaintiffs intend to incorporate the relief relating to infringement of trademark, that would not fundamentally change the character of the suit and it would only be in the nature of alternative relief."

It added, "The basic structure of suit which is one for passing off would not in any way stand altered by the proposed amendment. What is sought by way of proposed amendment is to incorporate additional relief relating to infringement. If in the opinion of the trial Court, it was open to the plaintiffs to file a fresh suit and if that was one of the reason which prompted the trial Court to relegate the plaintiffs to file a separate suit, then the impugned order under challenge is not sustainable in the light of the principles laid by the Apex in the case of Sampath Kumar vs. Ayyakannu & Another (supra)."

It also opined, "The litigation in these categories often burden the Courts. Even on trivial issues, both the parties to the suit often on account of abundant precaution tend to file too many documents, lengthy arguments are extended, voluminous documents are produced and the pleadings are also unnecessarily found lengthy. In such a scenario, if plaintiffs were to be relegated to file independent suit that does not only lead to multiplicity of proceedings, the valuable time of the Court is also utilised to decide identical issues under two separate suits."

Accordingly, the Court allowed the petition. It said, "The proposed amendment, if allowed to be introduced, is not found to be mutually destructive with the existing reliefs in the plaint. The proposed amendment will not cause any prejudice to the defendants. The proposed amendment does not purport to set up a new case and if allowed, does not lead to injustice to the defendants."

Case Title: MILAAP SOCIAL VENTURES INDIA PVT. LTD & ANR v. GOOGLE INDIA PVT. LTD. & ANR

Case No: WRIT PETITION NO.6220 OF 2022

Citation: 2022 LiveLaw (Kar) 487

Date of Order: 23RD DAY OF NOVEMBER, 2022

Appearance: ADHITYA, ADVOCATE FOR SHISHIRA AMARNATH, ADVOCATE for petitioner; MANU KULKARNI, ADVOCATE FOR C/R1.