Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co.

Introduction

Can a second suit for trademark infringement and passing off be barred under Order II Rule 2 CPC when the defendant continues the infringing activity even after the filing of the first suit?

The Supreme Court considered this question in Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co. & Anr., (1997) 1 SCC 99; AIR 1997 SC 1398.

The judgment is an important authority on Order II Rule 2 CPC, cause of action, continuous and recurring causes of action, trademark infringement, passing off, and the requirement of producing the pleadings from the earlier suit.

Case Details

Case Name

Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co. & Anr.

Court

Supreme Court of India

Date of Judgment

18 November 1996

Citation

(1997) 1 SCC 99; AIR 1997 SC 1398

Bench

Dr. A.S. Anand and S.B. Majmudar, JJ.

Subject Matter

Order II Rule 2 CPC, trademark infringement, passing off, continuous cause of action and recurring infringement.

Facts of the Case

The appellant, Bengal Waterproof Limited, was the proprietor of the registered trademark “Duck Back”.

The respondents were manufacturing waterproof raincoats under the mark “Dack Back”.

The appellant alleged that the respondents’ mark was phonetically and visually similar to its own trademark and that the respondents were passing off their goods as those of the appellant.

The appellant had earlier filed a suit in 1980 alleging infringement of its trademark and passing off.

That suit was dismissed on the ground that there was no infringement of the appellant’s trademark.

The respondents, however, continued using the allegedly infringing mark.

In 1982, the appellant instituted another suit seeking a permanent injunction against the respondents for continuing to infringe the trademark and passing off their goods as those of the appellant.

The Trial Court held that the second suit was barred by Order II Rule 2(3) CPC.

The High Court also held that the suit was barred under Order II Rule 2, although it found on merits that the respondents’ conduct amounted to passing off.

The matter therefore reached the Supreme Court.

Main Issue Before the Supreme Court

The principal issue was:

Whether the second suit for trademark infringement and passing off was barred under Order II Rule 2(3) CPC because the appellant had already filed an earlier suit concerning the same trademark.

The Supreme Court held that the second suit was not barred because the subsequent acts of infringement and passing off constituted fresh and recurring causes of action.

Order II Rule 2 CPC

Order II Rule 2 requires a plaintiff to include the whole claim arising from a particular cause of action in one suit.

Under Order II Rule 2(3), where a plaintiff is entitled to several reliefs arising from the same cause of action but omits one of them without obtaining the necessary permission of the court, the plaintiff may be prevented from claiming that omitted relief in a subsequent suit.

Therefore:

Same Cause of Action + Available Relief + Omission → Possible Order II Rule 2 Bar

But:

Fresh Cause of Action → No Order II Rule 2 Bar

Identity of Cause of Action

The Supreme Court emphasised that identity of cause of action is essential for applying Order II Rule 2(3).

The defendant must establish that the second suit is based on the same cause of action as the earlier suit.

Merely showing that an earlier suit existed is not sufficient.

The Court held that unless there is identity of causes of action in the two suits, the bar under Order II Rule 2(3) cannot operate.

Earlier Suit and Subsequent Infringement

The most important feature of the case was that the respondents continued their alleged infringement after the first suit had been filed.

The first suit concerned the infringement and passing off that existed up to the time of that suit.

The second suit concerned the continuing acts of infringement and passing off occurring thereafter.

Therefore:

First Suit → Earlier Acts of Infringement

Second Suit → Subsequent and Continuing Acts

Result → Fresh Cause of Action

Continuous and Recurring Cause of Action

The Supreme Court recognised that some wrongs are continuous or recurring in nature.

Trademark infringement and passing off can fall within this category.

Every fresh act of infringement can give the trademark owner a fresh cause of action.

Therefore, the plaintiff does not necessarily have to obtain leave in the first suit to complain about every future act of infringement that has not yet occurred.

The Court held that in cases involving continuous or recurring causes of action, the bar under Order II Rule 2 cannot be mechanically applied.

Passing Off as a Tort

The Court explained the nature of an action for passing off.

Passing off is essentially an action based on deceit under the law of torts.

When a defendant repeatedly represents its goods as those of another person, each fresh act of deceit can give rise to a fresh cause of action.

Therefore:

Fresh Deceitful Act → Fresh Cause of Action

This principle was central to the Court’s reasoning.

Trademark Infringement

The Court also recognised that infringement of a registered trademark can constitute a recurring wrong.

Every fresh use of the infringing mark can give the trademark proprietor a fresh cause of action.

Thus:

Continuing Infringement → Recurring Cause of Action

This prevents an infringer from using Order II Rule 2 as a shield to continue an unlawful activity merely because the trademark owner had previously approached the court.

Important Principle

The central principle from the case is:

Where the cause of action is continuous or recurring, subsequent acts may give rise to fresh causes of action and a later suit is not necessarily barred by Order II Rule 2 CPC.

This principle is particularly important in cases involving:

• trademark infringement;
• passing off;
• continuing torts;
• recurring wrongs; and
• continuing unlawful conduct.

Pleadings of the Earlier Suit Must Be Produced

Another important principle concerns the burden of proving an Order II Rule 2 objection.

The Supreme Court held that the defendant must place the pleadings from the earlier suit before the Trial Court to establish that the causes of action were identical.

The Court stated that an inference regarding the Order II Rule 2 bar cannot simply be drawn from the plaint in the second suit.

Therefore:

Order II Rule 2 Plea → Earlier Pleadings Must Be Produced

Why the Earlier Plaint Is Important

The court needs to know exactly:

• what cause of action was pleaded in the earlier suit;
• what relief was claimed;
• what facts formed the basis of that suit; and
• whether the later suit is based on the same cause of action.

Without the earlier pleadings, the court cannot properly compare the two causes of action.

Therefore, the defendant cannot simply argue:

“There was an earlier suit, so the second suit is barred.”

The defendant must establish the identity of cause of action.

Failure of the Defendants in the Present Case

In the present case, the respondents failed to bring the pleadings of the earlier suit on record before the Trial Court.

They also did not properly produce those pleadings before the High Court through an application for additional evidence.

The Supreme Court held that producing a copy of the earlier plaint at the stage of proceedings before the Supreme Court could not cure this defect.

Therefore, there was a procedural failure in establishing the Order II Rule 2 plea.

Two Independent Reasons for the Decision

The Supreme Court’s decision can be understood on two grounds.

First

The defendants failed to establish the Order II Rule 2 bar because they had not properly produced the pleadings from the earlier suit.

Second

Even on merits, the second suit was not barred because the subsequent acts of infringement and passing off constituted fresh and recurring causes of action.

Therefore:

Failure to Prove Earlier Pleadings → Bar Not Established

and:

Fresh Infringement → Fresh Cause of Action → No Bar

Difference From Gurbux Singh v. Bhooralal

The judgment directly relies upon the principle laid down in Gurbux Singh v. Bhooralal.

Gurbux Singh

The Supreme Court held that the bar under Order II Rule 2 requires identity of cause of action.

The defendant raising the plea must establish the necessary facts.

Bengal Waterproof

The Court applied that principle to a continuing infringement case and clarified that recurring acts of infringement can create fresh causes of action.

Therefore:

Gurbux Singh → Identity of Cause of Action

Bengal Waterproof → Fresh Cause of Action From Recurring Wrong

Difference From Deva Ram v. Ishwar Chand

The case is also useful when studied with Deva Ram v. Ishwar Chand.

Deva Ram

The Court held that a subsequent suit is not barred merely because it concerns the same property. The causes of action must be the same.

Bengal Waterproof

The Court further explained that where the defendant’s wrongful conduct continues or recurs, the subsequent acts can create fresh causes of action.

Therefore:

Same Subject Matter → Not Automatically Same Cause of Action

Fresh Recurring Wrong → Fresh Cause of Action

Order II Rule 2 and Continuing Wrongs

A continuing wrong requires special attention.

If the wrongful act continues after the first suit, the cause of action may continue or recur.

For example:

Trademark Used in 1980 → First Cause of Action

Trademark Continued in 1982 → Fresh Cause of Action

The second suit can therefore be based upon the later infringement.

Example

Suppose A owns a registered trademark “ABC”.

B begins using a deceptively similar mark.

A files a suit in January seeking an injunction.

B continues using the mark after January.

A may be able to bring proceedings concerning the subsequent infringement, because those later acts constitute fresh causes of action.

The earlier suit does not necessarily give B immunity from future infringement.

Another Example

A sells goods under a particular trademark.

B repeatedly uses the same or a deceptively similar mark every month.

A files a suit concerning the infringement occurring up to June.

B continues the infringement in July, August and September.

The later acts can constitute fresh or recurring causes of action.

Therefore:

June Infringement → First Suit

July–September Infringement → Fresh Causes of Action

Important Limitation

The principle does not mean that a plaintiff can freely split a single existing cause of action into multiple suits.

Order II Rule 2 continues to apply where the plaintiff is attempting to divide one existing cause of action into separate claims.

The special principle in Bengal Waterproof applies because the subsequent wrongful acts themselves create fresh causes of action.

Res Judicata

The case also involved the issue of res judicata.

The High Court had held that the second suit was not barred by res judicata.

The Supreme Court’s principal focus was the application of Order II Rule 2.

The distinction remains important:

Res Judicata → Matter already adjudicated

Order II Rule 2 → Relief omitted from same cause of action

Order II Rule 2 vs Continuing Cause of Action

Ordinary Cause of Action	Continuing/Recurring Cause of Action
Cause arises from particular facts	Wrong continues or recurs
Relief should generally be claimed together	Later wrongful acts may create fresh causes
Omission can attract Order II Rule 2	Subsequent acts may avoid the bar
Same cause of action is central	Fresh cause of action arises from later acts

Important Examination Question

Is every subsequent suit for trademark infringement barred by Order II Rule 2?

No.

If the subsequent suit concerns fresh or continuing acts of infringement, it may be based on a fresh cause of action.

Important Examination Question

What must a defendant establish to invoke Order II Rule 2?

The defendant must establish that:

Earlier Suit → Same Cause of Action → Relief Available → Relief Omitted

The pleadings of the earlier suit should be produced to establish the identity of the causes of action.

Important Examination Question

Can every fresh act of passing off create a fresh cause of action?

The Supreme Court recognised that passing off is essentially a tortious act of deceit and that each fresh deceitful act can give rise to a fresh cause of action. (Juris Codex)

Ratio Decidendi

The ratio of Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co. is that the bar under Order II Rule 2(3) CPC applies only when the subsequent suit is founded on the same cause of action as the earlier suit. Where trademark infringement or passing off continues or recurs after the earlier suit, each subsequent infringing or deceitful act may constitute a fresh cause of action. Further, a defendant relying on Order II Rule 2 must produce the pleadings of the earlier suit to establish identity of cause of action.

Legal Principles Established

1. Identity of Cause of Action Is Essential

Order II Rule 2 cannot apply unless the causes of action in the two suits are the same.

2. Earlier Pleadings Must Be Produced

The defendant must place the pleadings of the earlier suit before the court to establish the bar.

3. Continuous Wrongs Can Create Fresh Causes of Action

A continuing or recurring wrongful act may give rise to subsequent causes of action.

4. Passing Off Is a Tortious Wrong

Passing off is essentially an action based on deceit.

5. Each Fresh Act of Passing Off May Give a Fresh Cause of Action

A new deceitful act can create a new right to approach the court.

6. Trademark Infringement Can Be Recurring

Continued use of an infringing trademark may create recurring causes of action.

7. Order II Rule 2 Cannot Protect Continuing Infringement

A defendant cannot rely on the earlier suit to justify wrongful conduct occurring subsequently.

Comparison With Important Cases

Case	Principle
Gurbux Singh v. Bhooralal	Order II Rule 2 requires identity of cause of action
Deva Ram v. Ishwar Chand	Same subject matter does not automatically mean same cause of action
Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co.	Continuing and recurring infringement can create fresh causes of action
Mohd. Khalil Khan v. Mahbub Ali Mian	Explains principles for determining identity of causes of action
Inacio Martins v. Narayan Hari Naik	Subsequent claims must be examined according to their cause of action

Examination Formula

For Bengal Waterproof, remember:

Earlier Infringement → First Suit

Continued Infringement → Fresh Cause of Action

Fresh Cause of Action → Order II Rule 2 Bar Does Not Apply

A simple memory formula is:

Recurring Wrong → Fresh Cause of Action

Key Takeaways

1. Order II Rule 2 requires identity of cause of action.
2. The defendant must establish the bar by producing the pleadings of the earlier suit.
3. The plaint in the second suit alone is insufficient to establish the bar.
4. Continuing infringement can create fresh causes of action.
5. Recurring trademark infringement can give rise to fresh proceedings.
6. Passing off is essentially a tortious action based on deceit.
7. Every fresh deceitful act can give rise to a fresh cause of action.
8. A subsequent suit based on fresh infringement is not necessarily barred.
9. Order II Rule 2 does not give an infringer protection for future wrongful acts.
10. The case should be studied with Gurbux Singh v. Bhooralal and Deva Ram v. Ishwar Chand.

Law Student and Judiciary Relevance

For examinations, remember:

Order II Rule 2 → Same Cause of Action

Earlier Pleadings → Must Be Produced

Continuous Wrong → Recurring Cause of Action

Fresh Infringement → Fresh Cause of Action

Passing Off → Tortious Deceit

Fresh Deceit → Fresh Cause of Action

Same Cause of Action → Possible Order II Rule 2 Bar

The most important proposition is:

A subsequent suit concerning continuing or recurring trademark infringement or passing off is not barred under Order II Rule 2 where the later acts constitute fresh causes of action.

ALSO READ: Deva Ram v. Ishwar Chand

Conclusion

Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co. is a leading Supreme Court authority on the application of Order II Rule 2 CPC to continuing and recurring causes of action.

The judgment makes clear that Order II Rule 2 is concerned with preventing the splitting of a single cause of action. It does not prevent a plaintiff from approaching the court again when the defendant commits a new or continuing wrongful act after the earlier suit.

The case is particularly important in intellectual property disputes because trademark infringement and passing off may involve repeated acts. Each fresh act can create a fresh cause of action.

The central lesson is:

Same Cause of Action → Order II Rule 2 May Apply

Fresh or Recurring Wrong → Fresh Cause of Action

Fresh Cause of Action → No Order II Rule 2 Bar

For a law student, remember:

Earlier Infringement → First Suit

Continued Infringement → Fresh Cause of Action

Fresh Cause of Action → Fresh Suit Possible

Earlier Pleadings → Must Be Produced