Rochem Separation Systems (I) Pvt. Ltd. . vs Tas Engineering Co. Pvt. Ltd

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2000 Supreme(Bom) 792

IN THE HIGH COURT OF BOMBAY
F.I. Rebello, J.
Rochem Separation Systems (I) Pvt. Ltd..... Plaintiffs.
Versus
Tas Engineering Co. Pvt. Ltd. .... Defendants.
Notice of Motion No. 2936 of 1998 in Suit No. 3810 of 1998, decided on 9-10-2000.
Advocates appeared :
Virendra Tulzapurkar i/by Wadia Gandhy Co., for the plaintiffs.
Milind Vasudeo with Ms. Priya Ranade and Yogesh Chawala i/by Joy Legal Consultants, for the defendants.

Headnote:Sch. IV, Class 7-Maintainability of passing off action-Allegation of use of Disk and Tubes made by plaintiffs in plant by respondents-Necessary to know relation between Marks of Plaintiff and business-Deception possible only when distinction is well known-Plaintiffs only manufacturing plant-And not the final product sold to consumer-No question of deception or confession made out.- The concept of deception or confusion has to be on the touchstone of the customers who knows. The defendants are marketing their products using Disc. & Tube modules under their own name. The question of knowledgeable customers being deceived and confused will hardly arise. The plaintiffs were marketing goods, descriptive of a particular technology whose patent was registered and of which the plaintiffs were only licensed to manufacture. They are using the abbreviated word mark for the Technology. They were marketing the product when there was no other manufacturer, when their monopoly lasted and therefore there was nothing to compare with it. Apart from that as can be seen, these are desalination plants, manufactured and sold, either by intending purchasers placing orders or inviting bids. The question of deception, prima facie at least will not arise.
Sch. IV, Class 7- Technology or Trade mark-Dist. and Tube-Desalination plants manufactured by plaintiff-named as Disk and Tubes -Similar marks used by respondent-None other infield-Plaintiff using description name-The name cannot be held to be distinctive one-Plaintiff also not invested the product-He can not claim it as that of his own.-on the facts of the present case can it be said that the descriptive word in so far as plaintiffs are concerned had obtained distinctiveness. No doubt there are some affidavits filed in support of the plaintiffs claim.
But that by itself would not be sufficient material. All that plaintiffs were doing were using the new technology. It was the only manufacturer then and merely because it was using the descriptive name when none others were using the technology to manufacture desalination plants would not make the name distinctive which would restrain other manufacturers from using the technology and the name associated with the technology. The invention is not theirs. They have collaboration with other. The word Disk and Tube is descriptive of the technology used and had not obtained any distinctiveness. Plaintiffs have also failed to make out a case of irreparable injury or loss nor is the balance of convenience in their favour. Considering the above no case has been made out. Consequently, the injunction granted has to be vacated.

JUDGMENT - F.I. REBELLO, J.:---This is a Notice of Motion taken out by the plaintiffs against the defendants. It is the case of the plaintiffs that they manufacture and/or market desalination plants under the trade mark "DISK TUBE". The plaintiffs was incorporated in 1992 and commenced business of manufacturing and marketing plants for desalination and purification of water since October, 1992 and since then has been continuously carrying on the said business. Plaintiffs have been selling their products under trade marks DT DISK TUBE commonly abbreviated to DT MODULE since 1992 on an extensive scale. The plaintiffs have applied for registration of trade marks DT, DT DISK TUBE and DISK TUBE in Class 7 of the Fourth Schedule to the Trade and Merchandise Marks Act, 1958. The said applications are pending. It is the case of the plaintiffs that though they have applied for registration of the mark DISK TUBE, they are also marketing goods under the mark "DISC TUBE". Plaintiffs have annexed various documents to the plaint and have also relied on an affidavit to contend that the affiants associate the mark DT DISK TUBE with the plaintiffs. Six such affidavits have been filed. The plaintiffs have also filed a statement showing their sales turnover as also the advertisement expenses incurred by them. It is the case of the plaintiffs that an advertisement appeared in 1998 which was published in the Coast Guard Brochure on the occasion of Coast Guard Day, wherein the defendants have offered to supply "DISK TUBE" desalination plants. From the said advertisement, the plaintiffs came to learn for the first time that the defendants have adopted the trade mark DISK TUBE which is deceptively similar to the plaintiffs' trade mark. It is contended that the defendants have used the mark DISK TUBE in the manner caused to injure the plaintiffs' reputation in their business and profession. By reason of deception and confusion likely to be caused by use of the impugned mark, the plaintiff's goodwill and reputation will suffer. It is contended that defendants in law were bound to select a trade mark which is not calculated to injure the reputation of the plaintiffs. The plaintiffs have filed an additional affidavit of their Managing Director on 6th October, 1998. In the said affidavit they have reproduced extracts from the presentation made by the defendants, on or about 10th April, 1997 at the seminar organized by the defendants for the Coast Guard and Indian Navy Personnel on their Reverse Osmosis Theory and Practice. There is no need to reproduce what has been set out therein.

It is pointed out on behalf of the plaintiffs, that even if it is assumed that the expression DISK TUBE was descriptive, nonetheless by constant user it has become distinctive and it is the plaintiffs alone who were entitled to use of the same. Plaintiffs have relied on various Judgments which will be referred to hereinafter.

2. On behalf of the defendants, an affidavit has been filed by their Director Nazir H. Bandukwala. It is contended that the entire exercise is malafide. The defendants had bid for a contract floated by Coast Guard. The injunction was taken behind their back to prevent them from making their bid. It is pointed out that thereafter they moved this Court against the exparte order which was granted on 10th September, 1998. On 9th October, 1998 this Court was pleased to clarify that the ad-interim order dated 10th September, 1998 does not prohibit the defendants from claiming in the meeting of 12th October, 1998 of P.N.C. that their product meets with the tender requirement. That clarification was without prejudice to the rights and contentions of the parties. It is contended that the defendants were incorporated in 1964 and were converted into a private limited company in April, 1976. They are a medium size Engineering Company having experience in the field of design, manufacture and supply of various kinds of equipment to the chemical, petro-chemicals

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2000 Supreme(Bom) 792

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