09 四月 2020

Amendment of plaint in trademark dispute – Jurisdiction of Joint Registrar and maintainability of appeal before Commercial Appellate Court

Jurisdiction of Joint Registrar

Deliberating on the issue as to whether the Joint Registrar acted without jurisdiction while deciding on the application for amendment in the plaint, the Delhi High has held that the amendments, which alter the period with effect from which the trademark “SUPERON” had been adopted by the respondent (plaintiff), and also claimed, for the first time, that the original adoption of the said trademark was by the plaintiff through sister concern, introduced changes of substance, and not merely of form, in the original plaint. The Court was of the view that the amendment could not be characterised as “formal”, within the meaning of clause (2) of Rule 3 in Chapter II of the 2018 Original Side Rules, and hence the Joint Registrar exceeded his jurisdiction in deciding the application

The Court however upheld the plea that setting aside the Single Judge Order, deciding appeal against the Joint Registrar order and upholding application for amendment, would be futile, as SJ had examined the merits of the prayer for amendment of its plaint, independently and in detail. Th Court also noted that the right to amend, as confirmed by Order VI Rule 17 of the CPC, has advisedly been made expansive, save and except in cases where the trial has already commenced. It observed that prior user is one of the essential indicia, to be examined while adjudicating a claim of infringement and passing off, and hence the date from which the plaintiff-respondent was using the mark was fundamental to adjudication of the controversy.

Maintainability of appeal before Appellate Commercial Court

However, on the ground of maintainability of appeal, observing that the proviso to Section 13(1A) of the Commercial Courts Act is an enabling, rather than a disabling, provision, the Division Bench of the High Court held that the proviso should not be read as excluding, from the jurisdiction of the Appellate Court, all orders, passed by a Commercial Court, save and except those which find specific enumeration in Order XLIII of the CPC

The Court was of the view that Section 13(1A) of the Commercial Courts Act allows appeals to be preferred against all judgements and orders of the Commercial Division of the High Court, to the Commercial Appellate Division thereof, and the proviso to the said sub-section merely clarifies that in the case of orders specifically enumerated in Order XLIII of the CPC, such appeals shall lie. Delhi High Court decisions in the cases of HPL (India) Ltd. and Samsung Leasing Ltd., were distinguished by the Court in the case D & H India Ltd. v. Superon Schweisstechnik India Ltd., observing that the challenge in the present dispute was against an order passed under Rule 5 in Chapter II of the 2018 Original Side Rules, and not against an order under one or the other provision of the CPC.

Also, the Division Bench of the High Court in this decision dated 16-3-2020, though disagreed with the decision in the case of Rahul Gupta, which treated the jurisdiction of the Single Judge, against the order of the Registrar, as original in nature, it refrained itself from referring the issue to the Larger Bench. It held that the framers of the 2018 Original Side Rules must be deemed to have been cognizant of the view expressed in the case of Rahul Gupta. Observing that the Division Bench in Rahul Gupta had held that the reference to an “appeal” in Rule 4 in Chapter II of the 1967 Original Side Rules was a misnomer, the Court held that it was reasonable to expect that the “misnomer” would not be repeated, once again, in Rule 5 in Chapter II of the 2018 Original Side Rules. The Court also noted that in the case of Rahul Gupta, the Commercial Court Act did not arise for consideration.

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