In a recent decision, the High Court of Delhi considered whether a plaintiff that had instituted a passing-off action could amend its plaint to add a claim for trade mark infringement after securing registration of the mark during the pendency of the suit. The judgment affirms that procedural law should facilitate the effective adjudication of disputes and permit subsequent developments that materially affect the parties’ rights to be brought on record.

Brief Facts

L’Oréal instituted a passing-off suit concerning its mark GARNIER BRIGHT COMPLETE, challenging the Defendants’ use of the marks GARUDA BRIGHT COMPLETE 30x and 6 DROPS BRIGHT COMPLETE 3x VITAMIN C. During the pendency of the suit before the Trial Court, L’Oréal obtained registration for the device mark of the product subject matter of the suit. It thereafter applied under Order VI Rule 17 of the Code of Civil Procedure, 1908 (CPC), to amend the plaint, place the registration on record, and add a claim for trade mark infringement.

The Trial Court dismissed the application, holding that the original plaint did not disclose the pendency of the trade mark application and that the proposed amendment would introduce a new cause of action and alter the nature of the suit. It also noted that evidence had already concluded and considered that permitting the amendment at that stage would effectively reopen the proceedings.

Aggrieved by the dismissal, L’Oréal invoked the Delhi High Court’s supervisory jurisdiction under Article 227 of the Constitution of India and challenged the Trial Court’s order.

Contentions raised before the High Court:

L’Oréal submitted that:

1. The amendment was necessary to determine the real controversy between the parties.
2. Its infringement claim arose only after registration was granted during the suit. A separate action was unnecessary because the parties, marks, products, and underlying facts were the same.
3. Refusing the amendment would result in duplicative proceedings concerning the same marks and products.
4. The Respondents, having been proceeded against ex parte before the Trial Court, could not oppose the petition.

Respondents’ contentions:

The Respondents defended the Trial Court’s order, arguing that the amendment introduced a fresh cause of action, altered the nature of the suit, and relied on a trade mark application not disclosed in the original plaint.

Court’s Decision:

The Delhi High Court set aside the Trial Court’s order and allowed the amendment on the following grounds:

1. An amendment necessary to resolve the real controversy may be allowed at any stage; commencement of trial is not, by itself, a ground for refusal.
2. Subsequent facts and reliefs may be brought on record provided they do not fundamentally alter the nature of the suit.
3. A post-registration infringement claim may be added where it arises from the same facts, marks, and products as the passing-off claim.
4. Courts should adopt a liberal, rather than hyper-technical, approach to bona fide and necessary amendments.
5. As both claims concerned the same marks, products, and facts, refusing the amendment would cause duplicative proceedings. The Respondents were also ex parte, leaving no reason to prolong parallel litigation.

Conclusion

The decision affirms that a plaintiff may amend a passing-off suit to add an infringement claim when registration is obtained during the proceedings and both claims arise from the same facts. It reinforces that procedural rules should facilitate effective adjudication and avoid duplicative litigation.