1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY O. O. C. J. Chamber Summons No.330 of 2009 IN Suit No.1956 of 2007 Reed Elsevier Properties Inc. & anr. ..Plaintiffs v/s. Best Media Associates (India) Pvt.Ltd. ..Defendant Mr.Ashish Kamat i/by Mulla & Mulla & C.B.S. For Plaintiffs. Mr.Rahul Chitnis i/by Gajaria & Co. for Deft. ------ CORAM : SMT.ROSHAN DALVI, J. Dated : 17th March 2009 P.C. : 1.This is a passing off action. The Plaintiffs have sued in respect of their mark “Variety” and the Flying “V” logo. The Plaintiffs had applied for registration of the trade mark which registration was pending at the time this Suit was filed. 2.In reply to the Plaintiffs' initial Notice of Motion No.2642 of 2007 taken out in this Suit, the Defendant stated that it had used the same mark from 1991. Paragraphs 2 and 3 of the Affidavit-in-reply of the Defendant in that Notice of Motion dated 7.9.2007 show this fact. 2 3.The Plaintiffs had claimed user of the trade mark since February 2002 in their initial application for registration of the mark. 4.The Plaintiffs sought amendment of their application for registration of the mark in the Trade Mark Registry. Though a copy of that application is not annexed, it is sought to be made a part of the amended Plaint. Counsel on behalf of the Plaintiffs states that the amendment was sought on 1.1.2008. No notice of that amendment has been given to the Defendant. Consequently, the Defendant has not opposed the Plaintiffs' application for registration of the trade mark. That application has been granted. The trade mark of the Plaintiffs is registered as per the amendment, pursuant to which that subsequent fact is sought to be brought on record by way of amendment to this Suit and the relief for infringement of the trade mark is also sought. 5.The Written Statement has been filed on 5th August 2008. In paragraphs 3 and 4 of the Written Statement, the Defendant claims the user of the mark “Variety” since 1991. 6.The Defendant has opposed the application for amendment on the ground that it is not bonafide and on the ground that 3 the admission of the Plaintiffs that they were using the word mark from 2002 has been sought to be withdrawn by making the further statement of fact that the Plaintiffs were using the said mark from 1984 which is a few years prior to the year from which the Defendant claims to use the same mark. 7.The Defendant has relied upon a judgment of the Single Judge of this Court in the case of Rasiklal Manikchand Dhariwal & ors. vs. Kishore Wadhwani & Nitesh Ashok Wadhwani, 2005 (31) PTC 401 (Bom), which has been affirmed in Appeal before the Division Bench of this Court in the order dated 3rd May 2005. That was a passing off action for the mark “Manikchand”. In the Suit the Plaintiffs claimed to have used the mark from 1961. The Defendant showed earlier user from 1959. The Plaintiffs sought to amend the Plaint to claim their user since 1958. The amendment in that Suit was not applied for pursuant to registration of the trade mark. The amendment, therefore, was in a passing off action alone. The vested right of the Defendant was considered in the application pursuant to the amendment sought on the basis of an “error” of the Plaintiffs noticed subsequent to the filing of the Suit. In that case, the Defendant had claimed user of the same mark from 1959. 4 Hence it was held that the Defendant would have had a vested right under Section 34 of the Trade Marks Act, 1999, which would be taken away if the amendment claiming user from a year prior to the Defendant' s user was allowed. 8.The Supreme Court judgment in the case of M/s.Modi Spinning and Weaving Mills Co. Ltd. & anr. vs. M/s.Ladha Ram & Co., (1976) 4 SCC 320 relating to the scope of Order VI Rule 17 of the Code of Civil Procedure was extensively considered. That was a case in which it was held that the Defendant cannot resile from its admission once made in the Written Statement as a repudiation of clear admission is motivated to deprive the Plaintiffs of the valuable right accrued to them upon such admission and is consequently not bonafide. In that case the Defendant, who claimed initially that the Plaintiffs were the stockists-cum- distributors, later claimed that the Plaintiffs were mercantile agents-cum-purchasers and hence the contractual rights between the parties were completely altered. It was seen that a statement of fact made by a party constituted an admission whether or not it was in reply to a statement of fact raised by the other party and hence the same analogy relating to the retraction of an admission would apply to the Plaintiffs. 5 9.The Division Bench in Appeal from the judgment in the case of Rasiklal Manikchand (supra) of also considered that admission of a statement need not be made in response to an assertion by the other party. The Division Bench also observed thus: “The assertion of a fact irrespective of whether it was in response to an assertion to the contrary or qua an assertion on that aspect by another or otherwise is still an admission.” 10.It is, therefore, contended by Mr.Chitnis on behalf of the Defendant that admission of the Plaintiffs in their application for registration, Exhibit-K to the Plaint, that they used the mark “Variety” in India from 2002 would be withdrawn by the Plaintiffs if the application for amendment was allowed. He, therefore, contends that the amendments made to the application for registration of the trade mark before the Trade Mark Registry, without notice to the Defendant herein who could have opposed such an application upon such notice, was not bonafide and, therefore, the action in law for infringement of the trade mark, upon the fact that the Plaintiffs' trade mark would be 6 registered not from 2002 but from 1984 as per the amendment, would take away the Defendant' s vested right of user pursuant to the user of the trade mark from 1991 which would have been prior to the Plaintiffs' initially claimed user from 2002. 11.It is seen that the Rasiklal Manikchand' s case (supra) relied upon by the Defendant was the case of a passing off action simpliciter. It was, therefore, a case of withdrawing from an admission of fact made in the Plaint simpliciter. In this case, the claim of the Plaintiffs of user of the mark from 2002 is under the Plaintiffs' application for registration of the mark in Exhibit-K to the Plaint. The averment with regard to that is made in Para 5(j) to the Plaint. That having been amended, the Plaintiffs only seek, by way of subsequent events, to amend the Plaint to show the amended application in the Trade Mark Registry and the order passed thereon. If the Plaintiffs' user is not bonafide and if the Plaintiffs have managed to obtain the registration of the trade mark suppressing that fact from the Defendant, who should have been heard, the Defendant' s remedy would lie in another forum with regard to the registration of the Plaintiffs' mark. In this Suit, the Plaintiffs would nonetheless require to show their user from 1984. The Court is only interested in ascertaining and determining the truth of the case of the 7 parties. This application is only to the extent that the Plaintiffs would be allowed to aver the facts as they choose upon the subsequent events that have transpired. Since proof is different from a pleading and the relief that the Plaintiffs obtain would be upon proof of their pleading and not upon the pleading per se, a mere amendment of the Plaint cannot divest the Defendant of its rights ad infinitum. 12.Not allowing the amendments would tantamount to not allowing the Plaintiffs to sue for infringement upon their registered trade mark. Consequently, the amendments are required to be granted. The Chamber Summons is made absolute in terms of prayers (a) and (b). The Plaintiffs shall be allowed to annexe the Annexures mentioned in the amendments, though not exhibited as Annexures to the Schedule in this Chamber Summons subject to the Plaintiffs serving a copy of those Annexures upon the Defendant before the amendments are carried out. The Plaintiffs shall carry out the amendments within 4 weeks. The Plaintiffs shall also amend the copy of the Plaint served upon the Defendant within 4 weeks. The Defendant shall be entitled to file a further Written Statement within 30 days of the amendments being made in its copy of the Plaint. 13.This order is stayed for 4 weeks. (SMT.ROSHAN DALVI, J.) 8