Steelcase Inc. v. Mr. K.J. Bhuta and Anr.

11. Over the years, the Plaintiff has received numerous distinguished awards and recognitions. A list of some of awards received by the Plaintiff since the year 2010 are enumerated below:-

18. By virtue of global registrations, long use, vast publicity and excellent quality of the goods sold thereunder, the mark 'STEELCASE' of the Plaintiff has acquired tremendous reputation and goodwill amongst the purchasing public and the members of the trade such that the use of the same or similar trade mark by any other person is bound to cause confusion and deception as to the source of the product and/or imply a false association with the Plaintiff and/or its goods under the said mark.

21. Inquiries conducted by the Plaintiff through an independent investigator revealed that Defendant No. 1 is calling itself as a "franchise of the Plaintiff and are therefore using the image of the office of their parent company (i.e. the Plaintiff) on their webpage at the website of Defendant no. 2 at the link https://www.indiamart.com/steel-case-india/aboutus.html.”

7. The amendments sought by the plaintiff by way of the present application may be summarised as follows: a. In paragraph 10 of the plaint, the plaintiff seeks to amend its averment that it has been using the mark “STEELCASE” in India since “atleast the early 2000s”, to since “about the year 1965”. It also seeks to add averments regarding the sale of its “STEELCASE” branded goods in India prior to incorporation of its Indian subsidiary in 2004. The amendment sought, to this effect, reads as follows: -

10. The Plaintiff has been using the mark 'STEELCASE' in India since about the year 1965 and has a subsidiary named M/s.

2004. The Plaintiff has its offices/stores and is carrying on business at various cities in India. Prior to the incorporation of this subsidiary, the Plaintiff was exporting and selling its STEELCASE branded goods to India through its parent company. The Plaintiff also had Sales Representative Agreement and Trademark License Agreement dated December 20,1994 in India with Godrej & Boyce Mfg. Co. Ltd. for sale of its STEELCASE branded products in India. Copies of these agreements are being Filed herewith. ” b. The plaintiff proposes to add paragraphs 11 and 12, to incorporate averments regarding the reputation and goodwill enjoyed by the plaintiff in the concerned trademark in India due to factors other than the actual use of the trademark, and regarding media coverage which, according to it, associates the trademark exclusively with it. c. In addition to the website mentioned in paragraph 21 of the original plaint, the plaintiff seeks to add paragraph 24, containing pleadings regarding the use/display/advertising of the trade name “M/s Steel Case India Pvt. Ltd.” by defendant No.1 on various other websites. Submissions

8. Mr. B.B.Gupta, learned Senior Counsel for the plaintiff, submitted that the proposed amendments seek to elaborate upon the contentions of the plaintiff, already incorporated in the suit. He submitted that the suit being at a pre-trial stage, the approach of the Court in permitting amendment is generally liberal. Mr.Gupta placed reliance inter alia upon the judgments of the Supreme Court in Rajesh Kumar Aggarwal & Ors. vs. K. K. Modi & Ors., (2006) 4 SCC 385, Mahila Ramkali Devi & Ors. vs. Nandram and Ors., (2015) 13 SCC 132, and of a Coordinate Bench of this Court in Ms.Nisha Somaia vs. Outlook Publishing (India) Ltd. & Ors., (2008) 149 DLT 734. Mr.Gupta further submitted that the proposed amendments are intended to incorporate pleadings in support of the additional documents filed by the plaintiff.

9. Mr.Alankar Kirpekar, learned counsel for defendant No.1, submitted that an amendment of a plaint ought not to be permitted if it is not relevant to the adjudication of the disputes, if it results in the retraction of an admission, or if prejudice is caused to the contesting party. In the present case, he submitted that the proposed amendment to paragraph 10 of the plaint has the effect of resiling from the pleaded case that the plaintiff was using the trademark in question only since the 2000s, which would thus have the consequence of prejudicing defendant No.1, as it may deprive them of the defence under Section 34 of the Trade Marks Act, 1999. Mr.Kirpekar drew my attention to the contents of the application to submit that the plaintiff has not disclosed any justification for having omitted to make the proposed pleadings, either in the plaint or in the replication to the written statement. Mr.Kirpekar challenged the relevance of the amendments on the ground that reference to applications made by the plaintiff for registration of the trademark in 1965, which were subsequently abandoned, would not take the plaintiff’s case any further. He cited the judgments of the Supreme Court in Modi Spinning & Weaving Mills Co. Ltd. & Anr. vs. Ladha Ram & Co. AIR 1977 SC 680, and Revajeetu Builders & Developers vs. Narayanaswamy & Sons & Ors., (2009) 10 SCC 84. With regard to the plaintiff's prayer for leave to file additional documents, Mr.Kirpekar referred to a judgment of a Coordinate Bench in Nitin Gupta vs. Texmaco Infrastructure & Holding Limited 2019 SCC OnLine Del 8367 [CS(COMM) 1215/2016, decided on 29.04.2019.] Analysis

10. Order VI Rule 17 of the CPC provides as follows: “17. Amendment of pleadings -The Court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner and on such terms as may be just, and all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties. Provided that no application for amendment shall be allowed after the trial has commenced, unless the Court comes to the conclusion that in spite of due diligence, the party could not have raised the matter before the commencement of trial.”

11. The principles relating to amendment of pleadings have been elaborated in several decisions of the Supreme Court, and this Court, including the judgments cited by the counsel for the parties. In Rajesh Kumar Aggarwal (supra) the Court interpreted Order VI Rule 17 of the CPC as follows: - “16. Order 6 Rule 17 consists of two parts. Whereas the first part is discretionary (may) and leaves it to the court to order amendment of pleading. The second part is imperative (shall) and enjoins the court to allow all amendments which are necessary for the purpose of determining the real question in controversy between the parties.

19. While considering whether an application for amendment should or should not be allowed, the court should not go into the correctness or falsity of the case in the amendment. Likewise, it should not record a finding on the merits of the amendment and the merits of the amendment sought to be incorporated by way of amendment are not to be adjudged at the stage of allowing the prayer for amendment. This cardinal principle has not been followed by the High Court in the instant case.

20. …A reading of the entire plaint and the prayer made thereunder and the proposed amendment would go to show that there was no question of any inconsistency with the case originally made out in the plaint. The court always gives leave to amend the pleadings of a party unless it is satisfied that the party applying was acting mala fide. There is a plethora of precedents pertaining to the grant or refusal of permission for amendment of pleadings. The various decisions rendered by this Court and the proposition laid down therein are widely known. This Court has consistently held that the amendment to pleading should be liberally allowed since procedural obstacles ought not to impede the dispensation of justice....”

12. In Mahila Ramkali Devi (supra), the Court was concerned with an application for amendment of a plaint made in appellate proceedings. The High Court had rejected the application on the ground that it would change the nature of the suit after the lapse of more than forty years. While reversing this decision, the Supreme Court held as follows: - “20. It is well settled that rules of procedure are intended to be a handmaid to the administration of justice. A party cannot be refused just relief merely because of some mistake, negligence, inadvertence or even infraction of rules of procedure. The court always gives relief to amend the pleading of the party, unless it is satisfied that the party applying was acting mala fide or that by his blunder he had caused injury to his opponent which cannot be compensated for by an order of cost. ”

13. The principles have been summarised in the judgment in Revajeetu (supra), cited by Mr.Kirpekar, as follows:- “63. On critically analysing both the English and Indian cases, some basic principles emerge which ought to be taken into consideration while allowing or rejecting the application for amendment: (1) whether the amendment sought is imperative for proper and effective adjudication of the case; (2) whether the application for amendment is bona fide or mala fide; (3) the amendment should not cause such prejudice to the other side which cannot be compensated adequately in terms of money; (4) refusing amendment would in fact lead to injustice or lead to multiple litigation; (5) whether the proposed amendment constitutionally or fundamentally changes the nature and character of the case; and (6) as a general rule, the court should decline amendments if a fresh suit on the amended claims would be barred by limitation on the date of application.”

14. Mr.Gupta also cited the judgment of a Coordinate Bench in Nisha Somaia (supra) wherein the Court allowed an application for amendment of the plaint even after filing of the written statement by the defendants.

15. The proposed amendments are required to be considered in light of these principles. The amendments sought in this application, as summarised in paragraph 7 above, are dealt with below: a. As far as the amendment to paragraph 10 is concerned, it is significant that the original pleading of the plaintiff claims usage of the mark in India “since atleast the early 2000s”. The word “at least” signifies that there was no categorical or unequivocal admission that the mark had not been used prior to the period stated. The proposed amendment, to the effect that the plaintiff had used the mark since about the year 1965, is thus not directly contrary to the original pleading or inconsistent therewith. The documents being relied upon by the plaintiff in support of this proposed pleading have already been filed and taken on record. The amendment of the pleadings is therefore intended to incorporate the necessary averments which are, according to the plaintiff, borne out from those documents. As noticed in the authorities cited hereinabove, the merits or relative strength of the case sought to be made by amendment are not to be factored in at this stage – that is a question for adjudication in the suit, if the amendment is permitted. Mr.Kirpekar in the course of arguments fairly conceded that, subject to obtaining the leave of the Court, the plaintiff could withdraw the present suit and file a subsequent suit with the newly incorporated assertions. In these circumstances, I am of the view that the Court ought not to decline permission to amend the suit. However, in order to avoid any semblance of prejudice to defendant No.1, Mr.Gupta conceded that instead of substituting the original paragraph 10 with the proposed amended paragraph, the plaintiff would add the following averments at the end of paragraph 10:- “The plaintiff has been using the mark 'STEELCASE' in India since about the year 1965. Prior to the incorporation of this subsidiary, the Plaintiff was exporting and selling its STEELCASE branded goods to India through its parent company. The Plaintiff also had Sales Representative Agreement and Trademark License Agreement dated December 20, 1994 in India with Godrej & Boyce Mfg. Co. Ltd. for sale of its STEELCASE branded products in India. Copies of these agreements are being filed herewith.” b. As far as the amendments summarized in paragraph 7(b) above is concerned, I find that the pleadings of the plaintiff do make out a case of long use of the trademark and its consequent reputation. In paragraph 18 of the original plaint, the plaintiff has relied upon its “global registrations, long use, vast publicity and excellent quality of goods” to support its case of tremendous reputation and goodwill among the public and the trade. The averments sought to be incorporated in paragraphs 11 & 12 elaborate the position taken in the plaint, and are therefore permissible. c. The proposed paragraph 24 also expands upon a plea already taken regarding the use, display and advertising of the trade name of defendant No.1 on third party websites. While one website is mentioned in paragraph 21 of the original plaint, the proposed amendment incorporates nine other third party websites. It neither changes the cause of action nor resiles from any admission. This amendment too is therefore permissible.

16. In view of the aforesaid analysis, I am of the view that the proposed amendments are necessary to avoid multiplicity of proceedings and to enable proper and effective adjudication of the case. They do not change the nature and character of the case, or lead to such prejudice to defendant No.1 as is incapable of compensation by an order of costs.

17. Mr.Kirpekar’s reliance on the judgment in Nitin Gupta (supra) also appears to me to be misconceived. The said judgment deals with applications for taking on record additional documents under Order XI Rule 1 of the CPC, as applicable to commercial suits. In the present case, the order of this Court dated 14.05.2019 permitted the additional documents to be filed, and I am not at present concerned with that aspect of the matter. Mr.Kirpekar submitted that by the said order, the plaintiff was only permitted to apply for permission to file additional documents, and those documents were not taken on record. This reading of the order does not commend to me. Paragraph 2 of the order permits the plaintiff to place additional documents on record and to seek amendment by means of an application. Paragraphs 3 and 4 also proceed on the basis that further documentary evidence and claims of the plaintiff date back to 1969, and would thus have to go to trial. The present application and the additional documents having been filed prior to the said order, the Court in paragraph 8 permitted the documents to be taken on record, and in paragraph 9 and 10 directed completion of pleadings and hearing of only the amendment application.

18. Mr.Kirpekar’s contention that the plaintiff has not shown justification for the belated amendment is not, in my view, sufficient to decline leave to amend in the facts of the present case. It is clear from the judgments of the Supreme Court in Mahila Ramkali (supra) and Revajeetu (supra) that amendments ought to be allowed unless they cause prejudice of a nature that cannot be compensated in costs. The factors to be kept in mind with regard to costs, in paragraph 61 of Revajeetu, read as follows: - “61. The courts have consistently laid down that for unnecessary delay and inconvenience, the opposite party must be compensated with costs. The imposition of costs is an important judicial exercise particularly when the courts deal with the cases of amendment. The costs cannot and should not be imposed arbitrarily. In our view, the following parameters must be taken into consideration while imposing the costs. These factors are illustrative in nature and not exhaustive:

(i) At what stage the amendment was sought.

(ii) While imposing the costs, it should be taken into consideration whether the amendment has been sought at a pre-trial or post-trial stage.

(iii) The financial benefit derived by one party at the cost of other party should be properly calculated in terms of money and the costs be awarded accordingly.

(iv) The imposition of costs should not be symbolic but realistic.

(v) The delay and inconvenience caused to the opposite side must be clearly evaluated in terms of additional and extra court hearings compelling the opposite party to bear the extra costs.

(vi) In case of appeal to higher courts, the victim of the amendment is compelled to bear considerable additional costs. All these aspects must be carefully taken into consideration while awarding the costs.”

19. Having regard to the factors – particularly to the timing of this application, and the consequent necessity of the defendants filing further pleadings – the plaintiff is burdened with costs of ₹50,000/- as a condition for leave to amend the plaint. Conclusion

20. Keeping the aforesaid factors in mind, the application of the plaintiff is allowed in terms of paragraph 15 above, subject to payment of costs of ₹50,000/- to defendant No.1. The plaintiff is permitted to file an amended plaint in accordance with the directions contained therein. The amended plaint be filed within two weeks. The defendants will be at liberty to file amended written statements, alongwith additional documents within two weeks thereafter. Within the same time, the defendants may also file affidavits of admission/denial in respect of the additional documents filed by the plaintiff. The plaintiff may file amended replications to the amended written statements and affidavits of admission/denial of documents filed by the defendants, if any, within two weeks of the defendants filing the amended written statement.

21. List before the Joint Registrar on 20.01.2020 for completion of pleadings, admission/denial of documents, and marking of exhibits. List before the Court on the date fixed, i.e. 05.03.2020.

22. The application is disposed of with these directions.

PRATEEK JALAN, J. NOVEMBER 18, 2019 „hkaur‟/s