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11 March 2020

Trademarks – Amendment to plaint for passing off after registration of mark

Observing that the basic facts necessary for an infringement action were already present in the original plaint filed for passing off, excepting the fact of registration of the trade mark of the petitioner, the Calcutta High Court has allowed the application for amendment to plaint post grant of registration of trademark.

The trademark of the petitioner was registered during the pendency of the suit. The Court in the dispute Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills held that the nature and character of the suit will not change after the amendment as the basic fact remains unaltered. It was also held that the proposed amendment was necessary for the purpose of deciding the real controversy between the parties.

It though noted that the rights of the parties are normally decided on the date of suit, the Court in its decision dated 27-2-2020 was of the view that if a fact arising after the institution of the suit has a fundamental impact on the relief which the suitor is entitled to, such events must be taken into consideration to render substantial justice to the parties.

It was held that registration of the petitioner’s trade mark was a subsequent event having a fundamental impact on the relief. The Court was also of the view that this would avoid multiplicity of suits.

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