In a suit against passing off, amendment to plaint is permissible to include the remedy for trademark infringement: Karnataka High court

In a suit against passing off, amendment to plaint is permissible to include the remedy for trademark infringement: Karnataka High court

The petitioner sought a perpetual injunction against the respondents from passing off its trademark 'Milaap'

The Karnataka High Court has said that in a suit against passing off, an amendment to the plaint is permissible to include the remedy for trademark infringement. This is if the cause of actions are substantially identical and both the reliefs are based on the same fundamental idea.

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

The petitioner instituted a suit seeking perpetual injunction against the respondents from passing off its trademark 'Milaap'. It said that it first became aware that Impact Guru was using 'Milaap' to divert traffic to its own website crafted and designed by Google. The petitioner claimed that it was compelled to issue cease and desist notice to Impact Guru against using its mark as a keyword and to stop passing off.

Pending consideration of the suit, the petitioner's mark 'Milaap' was registered. Thereafter, the petitioner filed an application under Order 6 Rule 17 seeking amendment of the plaint and to include remedy of trademark infringement.

But the trial court rejected the application on the ground that if the defendants were guilty, the petitioner was entitled to file a separate suit for infringement of trademark based on a new cause of action.

The bench cited the judgment of the Supreme Court in the Sampath Kumar vs Ayyakannu & Ans case. Therein, it was held that if the amendment application was resisted on the ground that the plaintiff could maintain a separate suit, then there should be no impediment in allowing the amendment to avoid multiplicity of proceedings.

The court stated, "The primary issue involved in both the cases is on account of the 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 the plaintiff, post the registration of the trademark, intends to amend the plaint and incorporate the relief on account of infringement, it amounts to enlargement of that wrong, which is initially filed alleging passing off".

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

The bench stated, "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 the proposed amendment is to incorporate additional relief relating to infringement. If in the opinion of the trial court, it was open to the plaintiff to file a fresh suit and if that was one of the reasons which prompted the court to relegate the plaintiff to file a separate suit, then the impugned order under challenge is not sustainable in the light of the principles laid by the top court in the case of Sampath Kumar vs. Ayyakannu & Ans)."

It further mentioned, "The litigation in these categories often burdens the courts. Even on trivial issues, both parties, 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 the plaintiff was to be relegated to file an independent suit that does not only lead to multiplicity of proceedings, the valuable time of the court is also utilized to decide identical issues under two separate suits."

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