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Introduction
In L’Oréal SA v. Vekariya Nikunj Arvindbhai & Ors., (CM(M)-IPD 21/2026) the Delhi High Court on 13th July 2026 clarified that when a trademark becomes registered during the pendency of a passing off suit, the plaintiff need not file a fresh infringement suit. Instead, the plaint can be amended under Order VI Rule 17 CPC to include the infringement claim, since both actions arise from the same facts. Setting aside the Trial Court’s refusal, the Court emphasized that procedural law is meant to advance justice, and allowing such amendments avoids multiplicity of proceedings while enabling the Court to resolve the real controversy between the parties.
Facts of the Case
L’Oréal, owner of the GARNIER BRIGHT COMPLETE device mark and trade dress, alleged that the respondents marketed deceptively similar cosmetic products under “GARUDA BRIGHT COMPLETE 30X” and “6 DROPS BRIGHT COMPLETE 3X,” amounting to passing off. Since its trademark was neither registered nor even the subject of a pending application at the time, L’Oréal initially sued only for passing off and obtained an ex parte ad interim injunction. During the pendency of the suit, L’Oréal applied for registration of the mark, which was granted on 20 April 2025, giving it the statutory right to sue for infringement. It sought to amend the plaint under Order VI Rule 17 CPC to add this claim, but the Trial Court rejected the amendment, holding that registration created a new cause of action and trial had already commenced. In the exercise of its supervisory jurisdiction under Article 227, the Delhi High Court set aside the order, ruling that procedural law should facilitate justice and that amendments based on subsequent registration should be allowed, as both claims stemmed from the same facts and permitting amendment avoids multiplicity of proceedings.
Argument in Favour
Before the Delhi High Court, L’Oréal argued that the Trial Court had taken an overly technical view in rejecting its amendment. It submitted that the amendment only sought to reflect a subsequent event in the registration of its trademark during the pendency of the suit which could not have been pleaded earlier. The petitioner emphasized that the dispute, parties, rival marks, and factual basis remained unchanged; the amendment merely added the statutory remedy of infringement alongside passing off. Forcing a fresh suit would duplicate litigation and increase the burden on the parties. L’Oréal further contended that Respondents No. 2 to 5, having remained ex parte before the Trial Court, had no right to oppose the petition.
Argument Against
The respondents supported the Trial Court’s order rejecting the amendment, contending that the original suit had been instituted solely as a passing off action because the petitioner’s trademark had not yet been registered. After registration, however, the petitioner acquired an entirely new statutory cause of action for infringement. Since infringement and passing off are distinct remedies, the respondents argued that the petitioner could not convert the existing suit into an infringement action by way of amendment after the commencement of trial.
The respondents further contended that the original plaint did not even disclose that an application for registration of the trademark had been filed or was pending before the Trademarks Registry. According to them, this omission was significant because the petitioner could not subsequently introduce an entirely new claim founded upon facts that had not originally been pleaded. It was also argued that the amendment had been sought at a highly belated stage. The plaintiff had already concluded its evidence before the Trial Court, and permitting the amendment would effectively reopen the proceedings, resulting in unnecessary delay. The respondents therefore submitted that the Trial Court had correctly exercised its discretion in refusing the amendment.
Court’s Decision
The Delhi High Court held that the Trial Court had taken an unduly technical approach while rejecting L’Oréal’s application for amendment under Order VI Rule 17 CPC. The Court observed that the provision allows amendments at any stage of the proceedings if they are necessary for deciding the real dispute between the parties. Although amendments after the commencement of trial are subject to stricter scrutiny, they may still be permitted where the matter could not have been raised earlier despite due diligence.
The Court noted that when L’Oréal instituted the suit, its trademark was yet to be registered and therefore it could only seek the common law remedy of passing off. The registration granted on 20 April 2025 was a subsequent event that conferred upon the petitioner a statutory right to sue for trademark infringement. Since this right did not exist when the suit was filed, the proposed amendment was neither delayed nor based on previously omitted facts.
Rejecting the Trial Court’s view that the amendment introduced a fresh cause of action, the High Court held that both the passing off and infringement claims arose from the same facts, involved the same parties and related to the same rival marks. The amendment merely enabled the petitioner to claim an additional statutory remedy without changing the nature of the dispute.
In support of this view, the Court relied on Pravesh Narula Trading v. Raj Kumar Jain, 2024 SCC OnLine Del 7537, and Usha International v. Usha Television Ltd., 2002 SCC OnLine Del 306, where amendments were permitted after trademark registration during the pendency of passing off suits. These decisions recognized that allowing such amendments avoids unnecessary multiplicity of proceedings.
The Court also referred to Rajesh Kumar Aggarwal v. K.K. Modi, (2006) 4 SCC 385, wherein the Supreme Court held that amendments necessary for deciding the real controversy should ordinarily be allowed. The High Court found this principle directly applicable to the present case.
The respondents’ contention that the amendment was belated because the plaintiff had already concluded its evidence was also rejected. The Court held that the mere fact that trial had commenced could not defeat the amendment, particularly since the contesting respondents were already proceeding ex parte and refusing the amendment would only result in a fresh suit, prolonging the litigation between the parties.
The High Court further observed that the Trial Court had erred in criticising the petitioner for not mentioning its trademark application in the original plaint, since the application itself had been filed after the institution of the suit. Finally, the Court held that compelling L’Oréal to institute a separate infringement suit would only result in parallel proceedings involving the same parties and evidence, defeating the objective of judicial economy.
Accordingly, the Delhi High Court set aside the Trial Court’s order dated 10 February 2026 and allowed the amendment, holding that it would enable the entire dispute between the parties to be adjudicated in a single proceeding.
Conclusion
The decision in L’Oréal SA v. Vekariya Nikunj Arvindbhai & Ors. reinforces the well-settled principle that procedural law should advance, rather than obstruct, the administration of justice. By permitting amendment of the plaint after registration of the trademark, the Delhi High Court ensured that the entire dispute between the parties could be adjudicated in a single proceeding without compelling the plaintiff to institute fresh litigation.
The judgment also serves as an important reminder that although passing off and trademark infringement are distinct causes of action, they frequently arise from the same factual foundation. Where a trademark is registered during the pendency of a passing off suit, courts should adopt a pragmatic approach and permit appropriate amendments, particularly when doing so avoids multiplicity of proceedings and causes no prejudice to the opposing party. The ruling therefore provides valuable guidance for trademark owners and litigants faced with similar situations in future disputes.
