Karnataka HC: When Cause of Action is Same, Plaint Alleging Passing off Could be Amended to Include Remedy Against Trademark Infringement

Karnataka High Court Law Insider

Akansha Upadhyay

Published on: 30 November 2022 at 19:03 IST

The Karnataka High Court has held that in a suit against passing off, amendment of plaint to include remedies for trademark infringement is permissible if the cause of action is substantially similar and both the remedies are based on virtually the same fundamental idea.

A Single Judge Bench of Justice Sachin Shankar Magdum allowed the application filed by Milap Social Ventures, seeking amendment of its suit to include a remedy for trademark infringement by the Respondents, Google India and Impact Guru Technology Ventures (Respondent No.2) was done.  ‘Mix’ in your 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.”

It is alleged that the petitioner first became aware that Impact Guru was using its mark ‘Milap’ to divert traffic to its website designed and developed by Google. Hence the petitioner claimed that they were compelled to issue a cease-and-desist notice to Impact Guru for using its mark as a keyword and to stop the passing off.

During the pendency of the suit, the petitioner’s mark ‘Milap’ was registered.  It is in this context; the petitioners have filed an application under Order 6 Rule 17 seeking to amend the plaint and incorporate the remedy for trademark infringement.

The Trial Court dismissed the application on the ground that if the defendants are guilty of infringement of trademark, the petitioner/plaintiff is entitled to file a separate suit for infringement of trademark on the basis of a fresh cause of action.

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 proceedings between of 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 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 defendants. The to the proposed amendment does not purport to set up a new case and if allowed, does not lead to injustice to the defendants.”


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