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Civil Procedure Code, 1908-Or 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 of action in the 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 of proceedings before Supreme Court not allowed. Trade and Merchandise Marks Act, 1958, Copy Right Act-In case of continuing or recurring wrong there would be corresponding, continuous 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 on the part of the defendants subsequent to filing of the earlier suit and continuing till the date of filing 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 of contract 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 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 `Duck Back’ which phonetically and visually resembles the plaintiffs trade mark resulting 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 filed in the City Civil Court, Hyderabad by the appellant against the respondents inter alia alleging that they were ill-advised and mis-informed in filing 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. 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 filed the present appeals. =Allowing the appeal, this Court HELD:1.1. 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 which the earlier suit was based; and if the cause of action is the same in both the suits and if in the earlier suit the plaintiff had not sued for any of the reliefs available to him of that cause of action, the relief which the plaintiff had failed to pray in that suit can not be subsequently prayed for except with the leave of the Court. [702-H, 703-A- B] 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 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] 1.3. An action for passing off is a common Law remedy being an action in substance of deceit under the law of torts and for a fresh 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-E] 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 causes of action or recurring causes of action, the bar can not be invoked. The cause of action in the first suit of 1980 was based on infringement of plaintiff’s Trade Mark “Duck Back” by the defendant till the date of the suit and the grievance 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 any act of infringement or passing off alleged to have been committed by the defendant in 1980. But the plaintiffs 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 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 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 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 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 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. 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. [709-D-G] Gurbux singh v. Bhooralal, [1964] 7 SCR 831, followed. CIVIL APPELLATE JURISDICTION : Civil Appeal No. 14610 of 1996. =1997 AIR 1398, 1996( 8 )Suppl.SCR 695, 1997( 1 )SCC 99, 1996( 8 )SCALE369 , 1996(10 )JT 96

English: Hight court of the state of Andhra pr...

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PETITIONER:
M/S BENGAL WATERPROOF LIMITED

Vs.

RESPONDENT:
M/S BOMBAY WATERPROOF MANUFACTURINGCOMPANY & ANOTHER

DATE OF JUDGMENT: 18/11/1996

BENCH:
A.S. ANAND, S.B. MAJMUDAR
ACT:

HEADNOTE:

JUDGMENT:
J U D G M E N T
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. 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, 1908 (`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 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
before the Division Bench of the High Court the plaintiff
preferred Special Leave Petition under Article 136 of the
Constitution of India and as we have granted the leave, the
present appeal fell for consideration before us.
The case of the plaintiff 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, 1000
and also the owner of the copyright in the artistic design
of the word `DUCK BACK’ registered under the Copyright 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 pass of the plaintiff that 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
`DUCK BACK’ raincoats. The plaintiff further alleges that it
came to know that defendants were manufacturing and
marketing similar products under the trade mark `DUCK BACK’
which phonetically and visually resembled the plaintiff’s
trade mark resulting in confusion amongst consumers and
amounted to passing off of plaintiff’s 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
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 degree dated 6th April 1982 and
dismissed the same on the ground that there was no
infringement of plaintiff’s trade mark goods named and
styled as `DUCK BACK’ and, therefore, the reliefs 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 sealing in any manner with 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 plaintiff 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 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 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 plaintiff’s said letters dated
30th April 1982 and set up the defence of res judicata and
also purported to challenge deny the very validity of the
registration of the plaintiff’s trade mark `DUCK BACK’. It
was further 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 pars 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 action,
sought to be restrained in the suit and also where the
defendants reside. The prayers in 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 or
agents from infringing the
plaintiff’s registered trade mark
No.4378 as OI 29.8.1942 being the
word mark DUCKBACK by the USE IN
COURSE of trade the mark DACKBACK
or any other near resemblance to
the plaintiff’s said trade mark.
(b) a permanent injunction
restraining the defendants and each
of them, whether acting by
themselves or by their servants or
agents from doing the following
acts, that is to say, passing
causing or assisting others to pass
off waterproof of rubberised
material, air pillows, shoes, hot
water bags and other goods in Class
25 not being OI the plaintiff’s
manufacture by advertising,
offering for sale or selling any
imitation of the plaintiff’s said
goods by attaching to the same to
the mark DACKBACK or any colourable
imitation of the plaintiff trade
mark DUCKBACK.
(c) an injunction restraining the
defendants their servants or agents
from infringing the plaintiff’s
copyright being NO. A-4548/69 dated
19.7.1969 in any way ;
(d) delivery up for construction
all blocks. dies and other
implements for the printing or
uttering the mark DACKBACK with all
papers containing the said mark
such as letter beads. bills or
advertisements material ;
(e) an enquiry into damages and
such sum as may he found due
thereon ;
(f) to grant such other relief or
reliefs as this Hon’ble Court may
deem fit and proper in the
circumstances of the case ;
(g) award costs of the suit.”
The defence. amongst others, was that they had nor
infringed the plaintiff’s trade mark and in any case the
suit was barred by res judicata 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 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, he agreed with
the plaintiff on merits and cook the view that the
waterproof raincoats manufactured by the 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, 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.
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
are High Court has agreed with the plaintiff and there are
no cross objections or cross special Leave Petitions. The
learned counsel for the respondent-defendants fairly stated
that if this Court takes the view that the suit is not
barred as held by the High Court plaintiff’s 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 was barred by Order 2 Rule 2
sub-rule (3), CPS. The said rule, its sub-rules and
illustration below it read as under :
“2. Suit to include the whole
claim.-(1) Every suit shall include
the whole of the claim which the
plaintiff is entitled to make in
respect of the cause of action ;
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 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, he
the Court, to sue for all such
reliefs, he 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 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, 1907 is
due and unpaid, 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 case on an 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) Rule 2 of Order 2, CPC is concerned,
bar of which appealed to both the courts below, before the
second suit of the plaintiff can be held to be barred by the
same it must be shown that the second suit is based on the
same cause of action on which 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) that the second suit of the plain tiff filed
in 1982 is based on the dame 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 id
concerned there is a threshold bar against them for their
failure to bring on record the pleadings of the earlier suit
which unfortunately has not been properly appreciated by the
courts below. A Constitution Bench 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 of a bar
under 0.2 r.2(3). Civil Procedure
Code should succeed the defendant
who raises the plea must make out
(1) that the second suit was in
respect of the same 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 the
plaintiff, without leave obtained
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
the cause of action on which the
earlier suit was filed and that on
which the claim 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
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 if the defendant files in
evidence the pleadings in the
previous suit and thereby proves to
the Court the identity of the cause
of action in the two suits. It is
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 inferred what
the casue of action should have
been from the reference to the
previous of deduction. At the stage
of the appeal the learned District
Judge noticed this lacuna in the
appellant, cage and pointed out, in
out 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
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 firs suit. Thus there is a complete bar
against the defendants from raising the 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 Dingle 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 the bar of Order 2 Rule 2 sub-rule (3), CPC
and he further submitted that at least in counter 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 2 Rule 2 sub-rule (3), CPC which may be culied 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 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 foe additional
evidence. Therefore, it is too late in the day foe 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 Singh (supra), it must be held that it was not open
to the defendants to raise the contention of the bar of
Order 2 Rule 2 sub-rule (3), CPC in the 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 arens
of contest on this ground by the Trial Court as well as by
the High Court we have thought it fit to 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 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 1008 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
first suit, say, for the year 1909 or 1910 etc. as that
default would give 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 `DACK
BACK’ by the defendants and had also a grievance regarding
the then existing deceitful action of the defendants in
trying to pass of its goods `DUCK BACK’. Therefore, the
cause of action foe the first suit of 1980 was based on the
infringement of plaintiff’s trade mark `DUCK BACK’ by the
defendants till the date of the suit filed in 1980. The
grievance regarding passing off of the defendants’ 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. 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 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 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 plaintiff.
In the second suit, namely, the present suit the grievance
is not based on any acts of infringement of 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 filling of the earlier suit and which had
continued on the date of the second suit of 1982. The
relevant averments regarding the fresh cause of action which
had accrued to the plaintiff after the 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 came to learn the
following which it believes to be
true :
(a) That the defendants neither
manufacture nor sell nor deal with
goods in class 25 with the mark
DUCKBACK.
(b) That the Defendant No.1
manufactures and the defendant
No.2 offers for sale, sells or
otherwise deals with waterproof
articles rubberised or otherwise in
class 25 applying thereto the mark
DACKBAK, 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.
14. The plaintiff avers that the
mark DACKBACK is phonetically,
visually and in size similar to the
plaintiff’s said registered trade
mark DUCKBACK.
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
plaintiff’s said mark or design
DUCKBACK, but also have invaded the
common law tight of the plaintiff
by passing off goods in class 25,
not being those of the plaintiff’s
manufacture or sold by the
plaintiff.
16. By the two letters dated
20.4.1982 addressed to the
defendants separately, the
plaintiff called upon the
defendants 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 Mohammed 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 plaintiff reserves its comments
on the said letters both dated
25.5.1982 are filed herewith and
marked `F’ and `G’ respectively.
18. The Plaintiff has suffered
loss which cannot be easily
assessed and would suffer further
loss and damage unless the
defendants were restrained from
further infringing the said trade
mark DUCKBACK by the use of the
mark DACKBACK or any other near
resemblance or colourable imitation
of the 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.
19. The cause of action arose 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.
20. The cause of action arose at
Hyderabad where the defendants are
indulging in the illegal action
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 suit is not based on the some cause of action on
which the earlier suit was based. The cause of action for
filling this present second suit is the continuous and
recurring infringement of plaintiff’s 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 at present also the
defendants are trading in the offending goods, namely,
bearing the mark `DACK BACK’ 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 `DACK BACK’. It is obvious that thus
the alleged infringement of plaintiff’s 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 plaintiff’s 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 make a grievance
about the same and similarly such impugned passing 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 foe 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 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 of infringement of such trade mark giving a
recurring and fresh cause of action at each time of such
infringement to the party aggrieved. It is difficult to
agree how in such a case when in historical past earlier
suit was disposed of as technically not maintainable in
absence of proper reliers, 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 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 `DACK BACK’ passing them off, the plaintiff could have
been prohibited and prevented 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,
therefor, in substance the cause of action in both the suits
was identical. It is difficult to agree. In cases of
continuous causes of action or recurring causes of action
bar of Order 2 Rule 2 sub-rule (3) cannot be invoked. In
this connection it is profitable to have a lock at Section
22 of the Limitation Act, 1963. It lays down that `in the
case of a continuing tort, a fresh period of limitation
begins to run at every moment of the time during which the
beach or the tort, as the case may be, continues’. As act of
passing off is an act of deceit and tort every time when
such tortious act or deceit is committed by the defendant
the plaintiff gets a fresh cause of action to some 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 continuer 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 aggrieved
by such fresh infringements of 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.
Once this conclusion 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 defendant bearing the trade mark
`BACK BACK’ are phonetically and visually similar to those
of the plaintiff hearing the trade mark `DUCK BACK’, it must
be held that the plaintiff had made put 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.
In the result the appeal suceeds 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 is
ordered to be decreed as prayed for. Appeal is accordingly
allowed with costs all throughout.

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