9 judgments of the Delhi High Court, the Orissa High Court and 5 other courts applying Code of Civil Procedure s.151, from 2023–2026, each with a headnote by BRB Legal.
Application to amend a plaint in a long-running disparagement suit rejected, while the relief sought was granted by another route. The Court held that although amendments are to be allowed liberally, the object of Order VI Rule 17 is to substantiate, elucidate or expand pre-existing facts, and allowing an amendment here would serve neither that object nor the Commercial Courts Act's aim of an expeditious trial, setting at naught six years already gone by. Since the averments on ingredient disparagement were already in the original plaint, the later advertisements needed only to be placed on record as additional documents under Order XI, not pleaded afresh.
Appeal against refusal of interim relief dismissed. Where a rectification petition against the plaintiff's own registration is pending, section 124(1)(b)(i) requires the suit to be stayed until it is determined, and although section 124(5) preserves the power to grant interim relief, its exercise is discretionary. The District Judge was entitled to assess whether a sufficiently strong prima facie case had been made out and to find none, there being no sufficient material that the relevant class of consumers was likely to be confused. Authorities affirming the statutory presumption of confusion under section 29 were distinguished as decided where validity was not in issue.
Both writ petitions allowed and the suit at Jaipur dismissed, with liberty to the plaintiff to sue afresh in a court having jurisdiction. The plaintiff's registered mark having been cancelled in December 2019, the claim for injunction and damages founded on infringement did not survive. The suit could not be continued at Jaipur on prior user and passing off instead, because the prayer was wholly based on infringement, the pleadings on prior user and passing off lacked material facts, and no cause of action on that footing arose within the territorial jurisdiction of the District Court at Jaipur, the defendant's school being at Pune. Since passing off is a recurring cause of action, the Court exercised its inherent power under section 151 CPC ex debito justitiae to dismiss the suit rather than let it continue with those defects.
Appeal dismissed and the decree restraining publication confirmed. On limitation and acquiescence, the Court held that the printing and publication of books and their continued availability in the market is a continuing cause of action, so the suit was not time barred. On the assignment, sub-sections 2 to 6 of section 19 of the Copyright Act, including the five year and twelve month conditions introduced by the 1994 Amendment, do not apply to an assignment made before that Amendment came into force on May 10, 1995, and the assignment here was dated December 2, 1989.
Writ allowed and the order staying the suit under section 124 of the Trade Marks Act set aside. The requirements of section 124(1)(b) are cumulative and mandatory. The pendency of rectification applications filed by both sides is not enough: the plaintiff must also have pleaded the invalidity of the defendant's registered mark. Here the plaint alleged only fraudulent registration and passing off and recorded that the plaintiff was pursuing rectification separately, and no issue on invalidity was framed. The plea of invalidity was therefore to be treated as abandoned so far as the suit was concerned, and the suit had to proceed. The trial court had treated mere pendency of the rectifications as satisfying the statute, which was unsustainable.
Appeal against refusal of an interim injunction dismissed. Both sides held registrations, the respondent having applied earlier than the appellant, and the appellant's claim rested on use of its stylised letter mark since 1990, which the respondent seriously disputed. The Commercial Court had refused the injunction on the footing that where both parties hold certificates from the competent authority, a claim of prior user may give rights but requires trial rather than a prima facie finding. The Division Bench agreed that prior user would essentially require evidence and held that the reasoning disclosed no perversity or illegality warranting interference. Bacardi and ITC were distinguished, the defendants in those cases holding no registration or having been refused one.
Punjab and Haryana High Court · Injunction granted
Review of an earlier appellate judgment dismissed. The applicant contended that the judgment had proceeded on the Trade Marks Act, 1999 when the transaction fell under the Trade and Merchandise Marks Act, 1958. The Court held the two provisions parallel: both section 44 of the 1958 Act and section 45 of the unamended 1999 Act contain a proviso allowing the Registrar to refuse registration of an assignment until the rights of the parties are determined by a competent court. Since the statute itself contemplates the civil court deciding validity and enforceability of an assignment deed, such deeds must be admissible in evidence in a suit where that question arises. Brakes International and Patel Field Marshal were distinguished on their facts.
Allowed and remanded for de novo consideration. A rejection recording only that "the inventive concept lies in algorithm steps, merely receiving encoded data" was held untenable. The court's objection was not to the choice of words but to the imprecise and generic methodology: where claims define a method of decoding encoded video by reference to steps and physical features such as a decoder and buffer, the Controller must identify what precisely is objectionable in that claim language. Patentability under section 3(k) is to be assessed for the presence of technical effect or technical contribution following Ferid Allani.
An application under section 152 of the Code corrected a factual error in the Court's earlier order, which had recorded a mark as advertised when it had not been. The substituted paragraph directs that a formative mark be advertised without acceptance, as the applicant's sibling mark already had been.
