Supreme Court of India
M/S BENGAL WATERPROOF LIMITEDversusMIS BOMBAY WATERPROOF MANUFACTURING CO. AND ANR.
- Citation
- 1996 INSC 1321
- Decided
- 18 November 1996
- Disposal
- Appeal(s) allowed
- Bench
- A S ANAND
Holding
The second suit is not barred by Order 2 Rule 2(3) CPC because the cause of action is different and each act of infringement creates a fresh cause of action, and the defendants failed to produce the earlier pleadings.
Summary
Bengal Waterproof Ltd., holder of the registered trademark ‘Duck Back’, sued Bombay Waterproof Manufacturing Co. for infringement and passing off. The first suit (1980) was dismissed, and a second suit (1982) was filed alleging continuous infringement after the first suit. The trial court and High Court held the second suit barred under Order 2 Rule 2(3) of the CPC. The Supreme Court examined whether the bar applied, emphasizing that the defendants must produce the pleadings of the earlier suit to prove identity of cause of action, which they failed to do. It further held that each act of infringement or passing off creates a fresh cause of action, governed by Section 22 of the Limitation Act, and therefore the second suit was not barred. Consequently, the appeal was allowed and the second suit was decreed in favour of the plaintiff.
Issues considered
- The applicability of Order 2 Rule 2(3) CPC as a bar to the second suit
- Whether the cause of action in the second suit is identical to that in the first suit
- Whether the defendants satisfied the procedural requirement of producing the pleadings of the earlier suit
- Whether continuous trademark infringement and passing off give rise to fresh causes of action under the Limitation Act
Legislation cited
- Code of Civil Procedure, 1908s. Order 2 Rule 2(3)
- Copyright Act, 1957
- Limitation Act, 1963s. Section 22
- Trade and Merchandise Marks Act, 1958
Subjects
Order 2 Rule 2Civil Procedure CodeBar of suitTrademark infringementPassing offLimitation ActContinuous cause of actionRes judicataTrade Marks ActCopyright Act
Judgment
M/S BENGAL WATERPROOF LIMITED A
v.
MIS BOMBAY WATERPROOF MANUFACTURING CO.
AND ANR.
NOVEMBER 18, 1996
B
[DR. A.S. ANAND AND S.B. MAJMUDAR, JJ.]
Civil Procedure Code, 1908-0r 2 R 2 (3)-Bar in respect of claim
of relief in subsequent suit-The plea of bar under Or 2 R 2 (3) CPC is
maintainable only if the defendant files in evidence before the trial Court
the pleadings in the previous suit to prove identity of cause ofaction in the C
two suits-Inference about the bar cannot be culled merely from the plaint
in the second case-Attempt to bring the pleadings of the earlier suit on
record at the stage ofproceedings before Supreme Court not allowed.
Trade and Merchandise Marks Act, 1958, Copy Right Act-In case
ofcontinuing or recurring wrong there would be corresponding, continuous D
or recurrent causes of action-Action for passing off-Continuing deceit
gives rise to fresh causes of action-First suit based on infringement of
plaintiff's trade mark by defendants and passing off of the defendants
goods as if they were plaintiff's goods-Second suit based on continuous
acts of infringement of its trade mark and continuous passing of action en E
the part of the defendants subsequent to filing of the earlier suit and
continuing till the date offiling of the second suit-Cause of action in the
two suits are different-One of the ingredients of Or 2 R 2 (3) thus having
not been satisfied, bar thereunder could not operate.
Limitation Act 1963 S.22-In a case of continuing breach ofcon/met F
or continuing tort-A fresh period of limitation runs at every moment of
the time during which the breach or the tort continues.·
The appellant company, manufacturing and marketing
waterproof goods and rubberised waterproof raincoats throughout G
the country under the trade mark 'Duck Back', was registered under
the Trade and Merchandise Marks Act, 1958 and the Copy Right Act.
It filed original Suit No. 238 of 1980 in City Civil Court, Hyderabad
against the respondents alleging that they were manufacturing and
marketing similar products under the trade mark 'Dack Back' which
phonetically and visually resembles the plaintiff's trade mark resulting H
695
696 SUPREME COURT REPORTS [1996] SUPP. 8 S.C.R.
A in confusion among consumers and amounted to passing off the
appellant's goods as of the respondents'. The suit was dismissed on 6th
April, 1982 on the ground that there was no infringement of the
appellant's trade mark 'Duck Back' by the respondents. In the year
1982 the second suit was tiled in the City Civil Court, Hyderabad by
the appellant against the respondents inter alia alleging that they were
B ill-advised and mis-informed in tiling the first suit and further alleged
that even after 1982, the respondents were carrying on infringement
of their registered trade mark and were passing off their goods as the
goods of the appellants and prayed for permanent injunction restraining
the respondents from infringing their trade-mark and copy right as
well as from passing off their goods as if they were of the appellant's.
C The trial court held that the suit was barred by the provisions of Order
2 Rule 2 Sub Rule (3) of the CPC. On appeal, the High Court held that
the appellants had proved their case of pasting off against the
respondents but upheld the finding of the trial court that the suit was
barred by order 2 Rule 2 sub rule (3) of the CPC and thus dismissed
the same. Aggrieved, the plaintiff tiled the present appeals.
D
Allowing the appeal, this Court
HELD:l.I. A suit can be said to be barred under. Order 2, Rule
2 (sub rule 3) CPC if it is shown that the second suit is based on the
same cause of action on 'l'hich the earlier suit was based; and if the
E cause of action is the same in both the suits and if in the earlier suit
the plaintiff bad not sued for any of the reliefs available to him of
that cause of action, the relief which the plaintiff bad failed to pray
in that suit can not be subsequently prayed for except with the leave
of the Court. [702-H, 703-A-B]
F 1.2. As regards the plea of the respondents that suit is barred
under order 2 Rule 2 sub rule (3) there is a threshold bar against
them for their failure to bring on record of the trial court the pleadings
of the earlier suit. No inference can be drawn in absence of the pleading
of the previous suit being on record. Even before the High Court no
G attempt was made by them to produce the pleading in the earlier suit
by way of an application for additional evidence. Production of the
copy of the plaint by the respondent in the Counter Affidavit at the
stage of proceedings before the Supreme Court is of no avail.
[703-C, 704-G]
H 1.3. An action for passing off is a common Law remedy being an
BENGAL WATERPROOF LTD. 1•. BOMBAY WATERPROOF MFG. CO. [S.B. MAJMUDAR,J.] 697
action in substance of deceit under the !aw of torts and for a fresh A
deceitful act, a person would naturally have a fresh cause of action.
Thus every time when a person passes off his goods as those of another,
he commits the act of such deceit. Similarly, when a person commits
a breach of registered Trade Mark of another, he commits a recurring
act of breach of such Trade Mark giving recurring and fresh cause of
action at each time of such infringement. (708-C-EJ B
1.4. Order 2 Rule 2 sub rule (3) requires that the cause of action
from the earlier suit must be the same on which the subsequent suit is
based and unless there is identity of cause of action in both the suits,
the bar of Order 2 Rule 2 sub rule (3) will not get attracted. Further,
in cases of continuous c2uses of action or recurring causes of action, the C
bar can not be invoked. The cause of action in the first suit of1980 was
based on infringement of plaintiff's Trade Mark "Duck Back" by the
defendant till the date of the suit and the gr:evance regarding passing
off the defendant's goods as if they were plaintiff's goods, was also
confined to the situation prevailing on that date. But in the second suit
the grievance of the plaintiff is entirely different and is not based on D
any act of infringement or passing off alleged to have been committed
by the defendant in 1980. But the plaintiff's grievance is regarding the
continuous acts of infringement of its Trade Mark 'Duck Back' and
the continuous passing of action on the part of the defendants
subsequent to the filing of the earlier suit and which had continued on E
the date of the second suit of 1982. The cause of action in the second
suit is continuous and recurring. The infringement of the plaintiff's
Trade Mark "Duck Back" and passing of action on the part of the
defendants in selling their goods by passing of their goods as if they
were plaintiff's goods, had continued all throughout uninterrupted in
a recurring manner and such an action would give a recurring cause F
of action to the holder of the Trade Mark. (705-CE-F, 708,B]
2. By virtue of the provisions of section 22 of the limitation Act,
1973, in a case of continuing breach of contract or in a case of
continuing tort, a fresh period of limitation begins to run every G
moment of the time during which the breach or the tort, as the case
may be, continues. (709 AB]
3. As held by the High Court, on merits, the action of the
defendants is actionable and amounts to acts of passing off as the
waterproof raincoats manufactured by the first defendant bearing H
698 SUPREME COURT REPORTS [1996] SUPP. 8 S.C.R.
A the trade mark "Dack Back" are phonetically and visually similar
the those of the plaintiff bearing the trade marks "Duck Back". The
plaintiff had made out a case for actionable breach of infringement
of plaintifrs trade mark as well as actionable act of passing off by
the defendants of their goods as if they were plaintiff's goods and,
therefore, the plaintifrs suit would be required to be decreed. The
B judgment and order of dismissal of the plaintiff's suit as passed by
the Trial Court and as confirmed by the High Court are set aside.
(709-D-G)
Gurbux singh v. Bhoorola/, (1964) 7 SCR 831, followed.
C CIVIL AP PELLA TE JURISDICTION : Civil Appeal No. I46 I 0 of
1996.
From the Judgment and Order dated 18.6.91 of the Andhra Pradesh
High Court in C.C.A. No. l 12 of 1987.
D S. Hegde, Dilip Sinha, J.R. Das for Sinha and Das for the Appellant.
M.S. Ganesh and R. Ayyam Perumal for the Respondents.
The Judgment of the Court was delivered by
E S.B. MAJMUDAR, J. Leave granted.
By consent of learned advocates of parties the appeal arising from
the Special Leave Petition was finally heard and is being disposed of by
this judgment. A short question arises for our consideration in this appeal.
F It is to the effect as to whether the suit filed by the appellant against the
respondents in the Court of Chief Judge, City Civil Court, Hyderabad
being Original Suit No. 123 of 1982 was barred by the provisions of
Order 2 Rule 2 Sub-rule (3) of the Code of Civil Procedure, l 908 (CPC
for short). The Trial Court held that the suit was barred by the aforesaid
provisions. We will refer to the appellant as plaintiff and the respondents
G as defendants for the sake of convenience in latter part of this judgment. A
learned Single Judge of the High Court of Andhra Pradesh held on merits
that the plaintiff had established its case of passing off against the defendants.
However the decree of dismissal of the suit as passed by the Trial Court on
the ground that the suit was barred by 0.2 R.2 Sub-rule (3) was confirmed
by the learned Single Judge. As no writ appeal lies against the said order
H before the Division Bench of the High Court the plaintiff preferred Special
BENGAL WATERPROOF LID.''· BOMBAY WATERPROOF MFG. CO. [S.B. MAJMUDAR,J.] 699
Leave Petition under Article 136 of the Constitution of India and as we A
have granted the leave, the present appeal fell for consideration before us.
The case of the palintiff is that it is a proprietor of the trade mark
bearing the word "Duck Back" which is registered under the Trade and
Merchandise Marks Act, 1958 and also the owner of the copyright in the
artistic design of the word 'Duck Back' registered under the Copyright B
Act and that the plaintiff has acquired a good reputation in the Indian
market for waterproof goods and rubberised waterproof raincoats. It is
the further case ofthe plaintiffthat it markets its products under the registered
trade mark 'Duck Back' throughout the country and its product has obtained
good reputation and popularity amongst the consumers as 'Dack Back'
raincoats. The plaintiff further alleges that it came to know that defendants C
were manufacturing and marketing similar products under the trade mark
·Dack Back' which phonetically and visually resembled the plaintiff's trade
mark resulting in confusion amongst consumers and amounted to passing
off of plaintiffs goods as the goods of the defendants. The plaintiff was,
therefore, advised to sue the defendants under in the City Civil Court,
Hyderabad for infringement of registered trade mark 'Duck Back' and it D
prayed, inter alia, for permanent injunction on that basis. The learned
Trial Judge in that suit being Original Suit No. 238 of 1980 which will be
styled as the first suit, passed the judgment and decree date.d 9th April
1982 and dismissed the same on the ground that there was no infringement
of plaintiff's trade mark 'Duck Back' by the defendants who were trading
in their goods named and styled as 'Dack Back' and, therefore, the reliefs E
as prayed for in the plaint were not maintainable and could not be granted.
it is the case of the plaintiff that it was misinformed and ill-advised
when it instituted the first suit for injunction restraining the defendants
from manufacturing, selling, distributing and dealing in any manner with F
the waterproof 'Duck Back' raincoats. The plaintiff further alleged that
even thereafter in 1982 it came to its notice that defendants were carrying
on the infringement of plaintiff's registered trade mark and were passing
off their goods as goods of the palintiff and, therefore, they were liable to
be restrained by way of permanent injunction from infringing the trade
mark and copyright of the plaintiff as well as from passing off their goods G
as if they were plaintiff's goods. The said suit which is the second suit and
from which the present appeal arises was registered as Original Suit No.
123 of 1982 before the Chief Judge, City Civil Court, Hyderabad, it is
alleged in this second suit that by two letters both dated 30th April 1982
addressed to the defendants separately the plaintiff called upon the
defendants to desist from marketing, selling or offering for sale the said H
700 SUPREME COURT REPORTS [1996] SUPP. 8 S.C.R.
A goods in Class 25 with the mark 'Dack Back'. It was further averred in the
plaint of the second suit that by two letters both dated 25th May 1982
Mohammed Raftullah, acting as Advocate for both the defendants, baldly
refuted the factual statements in the plaintiffs said letters dated 30th April
1982 and set up the defence of res judicata and also purported to challenge
and deny the very validity of the registration of the plaintiffs trade mark
B 'DACK BACK'. It was fu11her averred in the plaint paragraph 19 that the
cause of action arose on or about 6th April 1982 and continues to arise de
die et diem within the jurisdiction of the Trial Court. In para 20 of the
second suit it was further averred that the cause of action arose at Hyderabad
where the defendants were indulging in the illegal actions, sought to be
restrained in the suit and also where the defendants reside. The prayers in
C the second suit read as under:
''Therefore, the Hon'ble Court may be pleased to grant:
(a) permanent injunction restraining the defendants and each
of them, whether acting by themselves or by their servants
D or agents from infringing the plaintiffs registered trade mark
No. 4378 as OJ 29.8.1942 being the word mark DUCK BACK
by the USE IN COURSE of trade the mark DACKBACK or
any other near resemblance to the plaintiffs said trade mark.
(b) a permanent injunction restraining the defendants and
E each of them, whether acting by themselves or by their
servants or agents from doing the following acts, that is to
say, passing off or attempting to pass off or enabling causing
or assisting others to pass off waterproof of rubberised
material, air pillows, shoes, hot water bags and other goods
F in Class 25 not being of the plaintiffs manufacture by
advertising, offering for sale or selling any imitation of the
plaintiffs said goods by attaching to the same to the mark
DACKBACK or any colourable imitation of the plaintiffs
trade mark DUCKBACK.
G (c) an injunction restraining the defendants their servants or
agents from infringing the plaintiffs copyright being NO.A-
4548/69 dated 19.7.1969 in any way;
(d) delivery up for construction all blocks, dies and other
H implements for the printing or uttering the mark DACKBACK
BENGAL WAIBRPROOF LTD. 1·. BOMBAY WATERPROOF MFG. CO. [S.B. MAJ MUD AR, J.J 70 1
with all papers containing the said mark such as letter heads. A
bills or advertisements material:
(e) an enquiry into damages and such sum as may be found
due thereon;
(f) to grant such other relief of reliefs as this Hon'ble Court B
may eem fit and proper in the circumstances of the case:
(g) award costs of the suit.''
The defence amongst, others, was that they had not infringed the
plaintiffs trade mark and in any case the suit was barred by res judicata C
and by order 2 Rule 2 sub rule (3), CPC in view of the fact that the earlier
suit based on the same cause of action was already dismissed by the Trial
Court on 6th April 1982. As noted earlier, the learned Trial Judge dismissed
the suit on the ground that it was barred by Order 2 Rule 2 sub-rule (3) of
CPC. So far as the learned Single Judge of the High Court was concerned, D
he agreed with the plaintiff on merits and took the view that the waterproof
raincoats manufactured by he first defendant bearing trade mark 'Dack
Back' phonetically and visually resembled the waterproof raincoats
manufactured by the plaintiff bearing trade mark 'Duck Back'. Thus, on
merits the learned Single Judge of the High Court held in favour of the
plaintiff. However, he persuaded himself to hold that the present suit, E
namely the second suit is barred by order 2 Rule 2 sub rule (3), CPC and,
therefore, the decree of the Trial Court dismissing the second suit deserved
to be confirmed. Of course, the learned Single Judge of the High Court
also took the view in favour of the plaintiff that the suit was not barred by
res judicata.
F
At the time of hearing of this appeal it became obvious that the fate
of this litigation depends upon the finding on the moot question whether
the second suit of the plaintiff is barred by Order 2 Rule 2 sub rule (3)
CPC as on merits the High Court has agreed with the plaintiff and there
are no cross objections or cross Special Leave Petitions. The learned counsel G
for the respondent-defend.ants fairly stated that if this Court takes the view
that the suit is not barred as held by the High Court plaintiffs suit would
be required to be decreed.
Under these circumstances we now proceed to address ourselves to
the sole moot question as to whether the second suit filed by the plaintiff H
702 SUPREME COURT REPORTS [1996] SUPP. 8 S.C.R.
A was barred by Order 2 Rule 2 sub rule (3), CPC. The said rule, its sub-
rules and the illustration below it read as under:
"2. Suit to include the whole claim. ( l) Every suit shall
include the whole of the claim which the plaintiff is entitled
to make in respect of the cause of action : but a plaintiff may
B relinquish any portion of his claim in order to bring the suit
within the jurisdiction of any Court.
(2) Relinquishment of part of claim-whether a plaintiff omits
to sue in respect of, or intentionally relinquishes, any portion
of his claim, he shall not afterwards sue in respect of the
c portion so omitted or relinquished.
(3) Omission to sue for one of several reliefs-A person entitled
to more than one relief in respect of the same cause of action
may sue for all or any of such reliefs : but ifhe omits, except
with the leave of the Court, to sue for all such reliefs, he
D shall not afterwards sue for any relief so omitted.
Explanation-For the purposes of this rule an obligation and
a collateral security for its performance and successive claims
arising under the same obligation shall be deemed respectively.
E to constitute but one cause of action.
Illustration-
A lets a house to B at a yearly rent of Rs. 1,200. The rent for
the whole of the years 1905, 1906 and 1907 is due and u\lpaid.
F A sues B in 1908 only for the rent due for 1906. A shall not
afterwards sue B for the rent due for 1905 or 1907."
A mere look at the said provisions shows that once the plaintiff
comes to a court of law for getting any redress basing his case on an
G existing cause of action he must include in his suit the whole claim
pertaining to that cause of action. But if he gives up a part of the claim
based on the said cause of action or omits to sue in connection with the
same then he cannot subsequently resurrect the said claim based on the
same cause of action. So far as sub-rule (3) of Rule 2 of Order 2, CPC is
concerned, bar of which appealed to both the courts below, before the
H second suit of the plaintiff can be held to be barred by the same it must be
pr"IGAL WATERPROOF LID."· BOMBAY WATERPROOF MFG. CO. [S.B. MAJMUDAR.l] 703
. .vn that the second suit is based on the same cause of action on which A
,h' earlier suit was based and if the cause of action is the same in both the
suits and if in the earlier suit plaintiff had not sued for any of the reliefs
available to it on the basis of that cause of action, the reliefs which it had
failed to press in service in that suit cannot be subsequently prayed for
except with the leave of the Court. It must, therefore, be shown by the
defendants for supporting their plea of bar of Order 2 Rule 2 sub-rule (3) B
that the second suit of the plaintiff filed in 1982 is based on the same cause
of action on which its earlier suit of 1980 was based and that because it
had not prayed for any relief on the ground of passing off action and it
had not obtained leave of the court in that connection, it cannot sue for
that relief in the present second suit. So far as this plea of the defendants
is concerned there is a threshold bar against them for their failure to bring C
on record the pleadings of the earlier suit which unfortunately has not
been properly appreciated by the courts below. A Constitution llench of
this Court in the case of Gurbux Singh v. Bhooralal, [1984] 7 SCR 831
speaking through Ayyangar, J. in this connection has laid down as under:
- "In order that a plea ofa bar under 0.2 r.2(3). Civil Procedure
Code should succeed the defendant who raise the plea must
make out (I) that the second suit was in respect of the same
D
cause of action as that on which the previous suit was based.
(2) that in respect of that cause of action the plaintiff was
entitled to more than one relief, (3) that being thus entitled
to more than one relief the plaintiff, without leave obtained E
from the Court, omitted to sue for the relief for which the
second suit had been filed. From this analysis it would be
seen that the defendant would have to establish primarily
and to start with, the precise cause of action upon which the
previous suit was filed, for unless there is identity between F
the cause of action on which the earlier suit was filed and
that on which the clairr. in the later suit is based there would
be no scope for the application of the bar. No doubt, a relief
which is sought in a plaint could ordinarily be traceable to a
particular cause of action but this might, by no means, be the
universal rule. As the plea is a technical bar it has to be G
established satisfactorily and cannot be presumed merely on
basis of inferential reasoning. It is for this reason that we
consider that a plea of a bar under 0.2 r.2, Civil Procedure
Code can be established only ifthe defendant files in evidence
the pleadings in the previous suit and thereby proves to the
Court the ide~tity of the cause of action in the two suits. It is H
704 SUPREME COURT REPORTS [1996] SUPP. 8 S.C.R.
A common ground that the pleadings in C.S. 28 of 1950 were
not filed by the appellant in the present suit as evidence in
support of his plea under 0.2 r.2, Civil Procedure Code. The
learned trial Judge, however, without these pleadings being
on the record have been from the reference to the previous
suit contained in the plaint as a matter of deduction. At the
B stage of the appeal the learned District Judge noticed this
lacuna in the appellant's case and pointed out, in our opinion
rightly, that without the plaint in the previous suit being on
the record, a plea of a bar under 0.2 r.2, Civil Procedure
Code was not maintainable."
C In view of the aforesaid authoritative pronouncement of the
Constitution Bench of this Court the learned Trial Judge as well as learned
Single Judge of the High Court ought to have held that the plea raised by
the defendants in the present case is barred at the threshold as the defendants
had not produced on the record of the Trial Court the pleadings in the first
-
suit. Thus there is a complete bar against the defendants from raising the
D bar of Order 2 Rule 2 sub-rule (3) against the plaintiff in the present case.
In this connection, we may refer to one submission made by the learned
counsel for the defendants which appealed to the learned Single Judge of
the High Court. He submitted that the averments in the second suit of the
plaintiff were that the first suit was misconceived and proper relief was
not prayed for. Therefore, it can be inferred that the second suit was hit by
E the bar of Order 2 Rule 2 sub-rule (3), CPC and he further submitted that
at least in c<'unter filed in reply to the Special Leave Petition the defendants
have produced the copy of the plaint in the first suit. We fail to appreciate
how this effort on the part of the defendants can be of any avail to them.
Firstly, the Constitution Bench of this Court in Gurbux Singh 's case (supra)
has clearly ruled that there cannot be any inference about the bar of Order
F 2 Rule 2 sub-rule (3), CPC which may be culled out from plaint in the
second case and secondly once the plea of bar of Order 2 Rule 2 sub-rule
(3) was not available to the defendants in the suit in the absence of the
pleadings in the earlier suit being brought on the record by them in support
of their case before the Trial Court they had missed the bus especially
G when even before the High Court no attempt was made by the defendants
to produce the pleadings in the earlier suit by way of an application for
additional evidence. Therefore, it is too late in the day for the defendants
to contend that along with counter in the Special Leave Petition before us
they had produced the copy of the plaint in the earlier suit. In the light of
the clear pronouncement of the Constitution Bench in the case of Gurbux
H Singh (supra), it must be held that it was not open to the defendants to
BENGAL WATERPROOF LTD." BOMBAY WATERPROOF MFG. CO. [S.B. MAJMUDAR,l.J 705
raise the contention of the bar of Order 2 Rule 2 sub-rule (3), CPC in the A
present case and, therefore, the learned Single Judge of the High Court
was clearly in error in non-suiting the plaintiff on that ground.
However, in order to give completeness to this judgment and as the
defendants were permitted to enter into the arena of contest on this ground
by the Trial Court as well as by the High Court we have thought it fit to B
examine their contention even on merits.
As seen earlier, Order 2 Rule 2 sub-rule (3) requires that the cause of
action in the earlier suit must be the same on which the subsequent suit is
based and unless there is identity of causes of action in both the suits the
bar of Order 2 Rule 2 sub rule (3) will not get attracted. The illustration C
below the said Rule amply brings out this position. A mere look at the said
illustration shows that if a landlord sues the tenant in 1908 for the rent due
till that year and omits to sue for rent for any of the previous years which
had then accrued due he cannot subsequently sue the tenant for the previous
rent due, claim for which was given up in the suit. It is obvious that a
subsequent suit would not be barred in case of rent falling due after the D
first suit, say, for the year 1909 or 1910 etc. as that default would given
him a fresh cause of action. In the facts of the present case it becomes
obvious that.when earlier suit was filed in 1980 the plaintiff had a cause of
action regarding the alleged illegal use of his trade mark 'DUCK BACK'
by the defendants and had also a grievance regarding the then existing
deceitful action of the defendants in trying to pass off its goods 'DACK E
BACK' as if they were similar to the plaintiff's goods 'DUCK BACK'.
Therefore, the cause of action for the first suit of 1980 was based on the
infringement of plaintiff's trade mark 'DUCK BACK' by the defendandts
till the date of the suit filed in 1980. The grievance regarding passing off
of the defendant's goods as if they were plaintiff's goods was also confined
to the situation prevailing on the date of the earlier suit No.238 of 1980. F
That suit failed as the plaintiff had not claimed proper relief. Consequently
for the alleged acts of infringement of plaintiff's trade mark or the alleged
passing off actions on the part of the defendants till the date of the earlier
suit no subsequent grievance could be ventilated by the plaintiff's by filing
a fresh suit. It is also pertinent to note that in the earlier suit, that is the G
first suit the plaintiff had claimed Rs. 25,000 by way of damages for the
alleged illegal acts of the defendants which were brought on the anvil of
scrutiny in the 1980 suit. So far as that cause of action is concerned no
subsequent suit lies as it would be barred under Order 2 Rule 2 sub-rule
(3). But we are concerned in the second suit with entirely a different
grievance of the plaintiff. In the second suit, namely, the present suit the H
706 SUPREME COURT REPORTS [1996] SUPP.8 S.C.R.
A grievance is not based on any acts of infringement or passing off alleged
to have been committed by the defendants in 1980 but plaintiff's grievance
is regarding the continuous acts of infringement of its trade mark 'DUCK
BACK' and the continuous passing off action on the part of the defendants
subsequent to the filing of the earlier suit and which had continued on the
date of the second suit of 1982. The relevant averments regarding the
B fresh cause of action which had accrued to the plaintiff after his disposal
of the earlier first suit are found in paragraphs 13 to 20 of the plaint in the
present second suit. They read as under:
"13. Thereafter the plaintiff made enquiries and come to learn
the following which it believes to be true:
c
(a) That the defendants neither manufacture nor sell nor deal
with goods in class 25 with the mark DUCKBACK.
(b) That the Defendant No. I manufactures and the defendant
No.2 offers for sale, sells or otherwise deals with waterproof
D articles rubberised or otherwise in class 25 applying thereto
the mark DACKBACK, a word mark.
(c) That the defendants are well aware of the fact that the
plaintiff's goods in class 25 have been marketed and sold for
years under the plaintiff's trade mark DUCKBACK.
E
14. The plaintiffavers thatthe mark DACKBACK is phonetically,
visually and in size similar to the plaintiff's said registered
trade mark DUCKBACK.
F 15. The plaintiff avers that the defendants by their said acts have
not only infringed the statutory rights of the plaintiff not
only under the Trade and Merchandise Marks Act, 1958 but
also under the Copy Right Act, 1957 by their wrongful use
of the mark DUCKBACK, which is confusing similar to or
deceptively resembling the plaintiffs said mark or design
G DUCKBACK, but also have invaded the common law right
of the plaintiff by passing off goods in class 25, not being
those of the plaintiffs manufacture or sold by the plaintiff,
as those of the plaintiff.
H 16. By the two letters dated 20.4.1982 addressed to the
BENGAL WATERPROOF LID."· BOMBAY WATERPROOF MFG. CO. [S.B. MAJMUDAR,l.] 707
defendants, separately, the plaintiff called upon the defendants A
to desist from marketing selling or offering for sale the said
goods in class 25 with the mark DACKBACK. Xerox copy
of the said two letters dated 30.4.1982 are filed herewith and
marked 'D' and 'E'.
17. By two letters both dated 25.5.1982 from Mohammad B
Raftullah, acting as Advocate for both the defendants, baldly
refuted the factual statements in the plaintiff's said letters
dated 30.4.1982 and set up the defence of RES JUDICATA
and also purported to challenge and deny the very validity of
the registration of the plaintiff's trade mark DUCK BACK.
The plantiff reserves its comments on the said letters until c
trial. Xerox copies of the said 2 letters both dated 25.5.1982
are filed herewith and marked 'F' and 'G' respectively.
18. The Plaintiffhas suffered loss which cannot be easily assessed
and would suffer further loss and damage unless the·
defendants were restrained from further infringing the said D
trade mark DUCKBACK by the use of the mark DACKBACK
or any other near resemblance or colourable imitation of '11e
plaintiff's mark DUCKBACK or from passing off in any
way goods in class 25 not being those of the plaintiff by the
use of the mark DACKBACK or otherwise as the goods of
the plaintiff.
E
19. The cause of action 'rose on or about 6.4.1982 and continues
to arise DE DIE ET .DIEM within the jurisdiction of this
Hon'ble Court. Thus the suit is within limitation.
F
20. The cause of action arose at Hyderabad where the defendants
are indulging in the illegal actions sought to be restrained in
the suit and also where the defendants reside. Thus, the
Hon'ble Court has got jurisdiction."
The aforesaid averments in the plaint clearly show that the present G
suit is not based on the same cause of action on which the earlier suit was
based. The cause of action for filing this present second suit is the
continuous and recurring infringement of plaintiffs trade mark by the
defendants continuously till the filing of the present second suit. We asked
the learned counsel for the defendants as to whether pending the suit and H
708 SUPREMECOURTREPORTS[I996] SUPP.8 S.C.R.
A at present also the defendants are trading in the offending goods, namely,
bearing the mark 'DACKBACK' and he informed us that defendants even
at present are carrying on this business. Therefore, pending the second
suit all throughout and during the pendency of these proceedings the
defendants have carried on the business of trading in the commodity
waterproof raincoats 'DACKBACK'. It is obvious that thus the alleged
B infringement of plaintiffs trade mark 'DUCK BACK' and the alleged
passing off action on the part of the defendants in selling their goods by
passing off their goods as if they were plaintiffs goods has continued all
throughout uninterrupted and in a recurring manner. It is obvious that
such infringement of a registered trade mark carried on from time to time
would give a recurring cause of action to the holder of the trade mark to
C make a grievance about the same and similarly such impugned off actions
also would give a recurring ' cause of action to the plaintiff to make a
grievance about the same and to seek appropriate relief from the court. It
is now well settled that an action for passing off is a common law remedy
being an action in substance of deceit under the Law of Torts. Wherever
and whenever fresh deceitful act is committed the person deceived would
D naturally have a fresh cause of action in his favour. Thus every time when
a person passes off his goods as those of another he commits the act of
such deceit. Similarly whenever and wherever a person commits breach
of a registered trade mark of another he commits a recurring act of breach
or infringement of such trade mark giving a recurring and fresh cause of
E action at each time of such infringement to the party aggrieved. It is difficult
to agree how in such a case when in historical pas'; earlier suit was disposed
of as technically not maintainable in absence of proper reliefs, for all
times to come in future defendant of such a suit should be armed with a
licence to go on committing fresh acts of infringement and passing off
with impunity without being subjected to any legal action against such
F future acts. We posed a question to the learned counsel for the defendants
as to whether after the disposal of the earlier suit if the defendants had
suspended their business activities and after a few years had resumed the
same and had started selling their goods under the trade mark 'DACKBACK'
by passing them off, the plaintiff could have been prohibited and prevented
G by the bar of Order 2 Rule 2 sub-rule (3) from filing a fresh suit in future
when such future infringement or passing off took place. He rightly and
fairly stated that such a suit would not be barred. But his only grievance
was that whatever was the infringement or passing off alleged against the
defendants in 1980 had, according to the plaintiff, continued uninterrupted
and, therefore, in substance the cause ofaction in both the suits was identical.
H It is difficult to agree. In cases of continuous causes of action or recurring
BENGAL WA1ERPROOFLTD. "· BOMBAYWA1ERPROOFMFG. CO. (S.B. MAJMUDARJ.] 709
causes of action bar of Order 2 Rule 2 sub-rule (3) cannot be invoked. In A
this connection it is profitable to have a look at section 22 of the Limitation
Act, 1963. It lays down that 'in the case of a continuing breach of contract
or in the case of a continuing tort, a fresh period of limitation begins to
run at every moment of the time during which the branch or the tort, as
the case may be, continues. As act of passing off is an act of deceit and tort
everytime when such tortious act or deceit is committed by the defendant B
the plaintiff gets a fresh cause of action to come to the court by appropriate
proceedings. Similarly infringement of a registered trade mark would also
be a continuing wrong so long as infringement continues. Therefore,
whether the earlier infringement has continued or a new infringement has
taken place cause of action for filing a fresh suit would obviously arise in
favour of the plaintiff who is aggrived by such fresh infringements of C
trade mark or fresh passing off actions alleged against the defendant.
Consequently, in our view even on merits the learned Trial Judge as well
as the learned Single Judge were obviously in error in taking the view that
the second suit of the plaintiff in the present case was barred by Order 2
Rule 2 sub-rule (3), CPC.
D
Once this conclusion is reached the result is obvious. As the learned
Single Judge of the High Court has held on merits in favour of the plaintiff
and has taken the view that the action of the defendants is actionable and
amounts to acts of passing off as the waterproof raincoats manufactured
by the first dependent bearing the trade mark 'DACKBACK' are E
phonetically and visually similar to those of the plaintiff bearing the trade
mark 'DUCK BACK'. It must be held that the plaintiff had made out a
case for actionable breach of infringement of plaintiff's trade mark as
well as actionable act of passing off by the defendants of their goods as if
they were plaintiff's goods and, therefore, the plaintiff's suit would be
required to be decreed. F
In the result the appeal succeeds and is allowed. The judgment and
order of dismissal of the plaintiff's suit as passed by the Trial Court and
as confirmed by the High Court are set aside. Plaintiff's Original Suit
No.123 of 1982 in the Court of Chief Judge, City Civil Court, Hyderabad G
is ordered to be decreed as prayed for. Appeal is accordingly allowed with
costs all throughout.
H.K. Appeal allowed.
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