Delhi High Court - Orders
Rochem Separation Systems (India) ... vs Ion Exchange India Ltd on 7 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 548/2019
ROCHEM SEPARATION SYSTEMS
(INDIA) PRIVATE LIMITED ..... Plaintiff
Through: Ms. Mahua Roy Chowdhury, Mr.
Sanjay Kumar Visen and Ms. Prachi
Chahal, Advocates.
versus
ION EXCHANGE INDIA LTD. ..... Defendant
Through: Mr. Ajay Sahni, Mr. Samir Tandon,
Mr. Chirag Ahluwali and Mr. Aashish
Arora, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 07.12.2022 I.A. 13691/2019 (under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 ["CPC"] for interim injunction)
1. The Plaintiff, manufacturer of Purification Systems and Water Treatment Plants in India, is proprietor of registered trademarks - 'DISCTUBE', 'DISK TUBE', 'DT DISK TUBE' and 'DT' - and its variants, registered from 2004 to 2007 for Filtration Membranes Systems and RO Desalination Plants. Defendant is also into the same business and uses the mark 'INDION Disc Tube Membrane (DTRO) System'. Although, Defendant uses the phrases 'Disc Tube Membrane (DTRO) System' or 'DTRO' in conjunction with its mark 'INDION', nonetheless, Plaintiff Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 1 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 considers the same to be infringement and passing off of its marks as Defendant's mark incorporates the words 'Disc Tube'. They also allege that Defendant's marks are identical and/ or deceptively similar to Plaintiff's aforenoted marks. Upon perusal of record and after hearing the counsel, prima facie, no case of infringement or passing off is made out, for reasons discussed hereinafter.
2. The Plaintiff claims use of afore-noted marks for almost thirty years. It is contended that the Disc Tube technology was originally developed by West Germany Research Centre (GkSS) and was a patented design in several countries, including India. It was introduced in India in the year 1993 and Plaintiff's products are based on RO and use an advanced version of 'plate and frame' technology. The aforementioned trademarks are well- recognized amongst consumers in the relevant domain and Plaintiff enjoys immense trust, goodwill, and reputation for its goods and related services. The afore-mentioned trademarks immediately convey to the consumer that the products are originating from the Plaintiff and not from any other manufacturer.
3. Plaintiff claims to be the pioneer in this field and strongly objects to Defendant using phrases such as, 'Disc Tube Membrane (DTRO) System' and 'DTRO' along with its mark/ brand name 'INDION', in respect of identical products and services. This use is alleged to be infringing and diluting Plaintiff's basket of registrations and an attempt to ride upon Plaintiff's goodwill. They contend that on 20th March, 2019, it came to its knowledge from one of its clients (M/s. Vision Water Pvt. Ltd.) that Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 2 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 Defendant has been selling Filtration Membrane Systems with a deceptively similar name and the said client assumed that Defendant is one of Plaintiff's distributors. Upon receiving the aforesaid information and to ascertain the extent of Defendant's activities, Plaintiff conducted an investigation and found that Defendant is using Plaintiff's registered marks, thereby creating unauthorized association with Plaintiff's products. Plaintiff has filed a screenshot of Defendant's website as well as its brochure, which reflects use of the mark as 'INDION Disc Tube Membrane (DTRO) System' and 'INDION DTRO'. It is also alleged that Defendant is not only using Plaintiff's registered marks but also claiming the same as its own property by prefixing its brand mark 'INDION'. The threshold for likelihood of confusion is met in view of evidence of actual confusion, which is apparent from the use of marks - 'Disc Tube Membrane (DTRO) System' and 'DTRO', which are identical/ deceptively similar to Plaintiff's registered marks. Further, use by Defendant of Plaintiff's registered trademarks, in conjunction with its own trademark, sans authorization/ permission, amounts to passing off Plaintiff's marks as its own and exhibits dishonest and mala fide intent. Reliance is placed on the judgment of the High Court of Bombay in Federal Brands Ltd. v. Levi Strauss India Pvt. Ltd.1
4. Responding to Plaintiff's allegations of infringement, Defendant argues that Plaintiff's marks are neither distinctive nor have they acquired distinctiveness through secondary meaning. They argue that the marks are purely descriptive and merit no protection. Further, the expressions used by 1 MANU/MH/0340/2016.
Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 3 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12Defendant viz. 'Disc Tube Membrane (DTRO) System' and 'DTRO', indicate characteristics/ type of technology of its products offered for sale, under its mark - 'INDION', and such use is permissible under Trademark law.
ANALYSIS
5. One such mark of the Plaintiff is 'DISCTUBE' - a combination of the words 'DISC' and 'TUBE'; Plaintiff also has subsisting registration in the marks 'DISK TUBE' and 'DT'. The words 'disc' (chiefly used in British English) and 'disk' (chiefly used in North American English), are often used interchangeably. The words - 'disc' and 'tube' are common English words - the former refers to a flat circular object and the latter, denotes a long, hollow pipe or cylinder made of metal, plastic, rubber, etc., used for moving liquids or gases. The infringing mark 'Disc Tube Membrane (DTRO) System', which incorporates the words 'Disc' and 'Tube'; is a disjointed version of Plaintiff's mark 'DISCTUBE', however, Defendant is using this phrase to explain/ describe the technology used by it. Defendant's use of 'DTRO' is essentially as an acronym of 'Disc Tube RO'. The above use by Defendant is prefixed with its mark viz. 'INDION', which is indicative of source, and thus, 'Disc Tube' or 'DTRO' not being used as a trade mark and would not amount to infringement under Section 29(1) of the Trade Marks Act, 1999 [hereinafter "the Act"]. Further, Defendant's use of the words 'Disc Tube' is in a descriptive/ generic sense to convey the nature, functionality and technology of the product offered by it. This use is permissible, falling squarely within the statutory exceptions contained in Section 30(2)(a) and Section 35 of the Act. In this regard, it is apposite to Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 4 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 extract the relevant portion of Defendant's brochure, which is relied upon by Plaintiff to allege infringement:
"INDION Disc Tube Membrane (DTRO) System Ion Exchange in association world leaders in DTRO technology, Rochem Group SA, Introduced the specially designed INDION DTRO system that treats water from complex alternate water sources and makes it suitable for drinking and industrial purposes with its flat-sheet membrane technology, it treats complex water with minimal pretreatment and footprint. It produces which has very low dissolved solids and is free from particulates, colloids and organic matter.
The system has provision for inline dosing. It is equipped with an in-built clean- in-place (CIP) for periodic membrane cleaning and safety features such as dry run protection, overload protection etc; to prevent high-pressure pump and membrane system from damage. Complete operation and fault indication is simulated onscreen INDION DTRO removes more than 95% of total dissolved solids (TDS) and efficiently handles TDS fluctuation. It reduces the replacement cost of the membrane INDION DTRO treats complex wastewater generated from industries like distillery, pharmaceutical, chemical, textile, tannery and many more."
6. The use of phrases 'Disc Tube Membrane (DTRO) System' and 'DTRO' are apt for indicating the characteristics of the technology used by Defendant and are evidently not being used in trade mark sense. In the introductory page of the brochure (titled - 'PRODUCT LAUNCH') it is also mentioned that "Ion Exchange, in association with world leaders in DTRO technology, Rochem Group SA, introduced the specially designed INDION DTRO system that treats water...". This further suggests that Defendant's use of its marks is neither mala fide nor a dishonest adoption. They have only claimed introduction of already existing technology "DTRO system" in India. Significantly, as noted above, use of descriptive expression 'Disc Tube Membrane (DTRO) System' is prefixed by Defendant's registered trademark viz. 'INDION', which distinguishes Defendant's products from Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 5 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 the Plaintiffs and no confusion or deceptive similarity can be inferred. Further, Defendant has also annexed the 'Business Agreement' entered into between Defendant and Rochem Group SA on 04th May, 2018, for a term of three years, wherein Rochem Group SA has appointed Defendant as the exclusive distributor of its products and technologies in assigned territories.2
7. It is apposite to extract relevant portion of Plaintiff's Brochure (titled
- 'ROCHEM RO-Water Desalination'), which demonstrate use of Plaintiff's use of the marks:
"The ROCHEM DISC TUBE MODULE SYSTEM.
A major advance in Reverse Osmosis Technology Rochem's disc module technology has created major advances in the field of REVERSE OSMOSIS and its use in the desalination and purification of seawater, brackish water and city water.
The Disc Tube Module (DT) is a major advance from the plate module technology which was originally developed by the West Germany Research Centre (GKSS). The patented DT Membrane Module is a modern design for desalination and purification of liquids. It operates effectively and economically also at increased turbidity and Slit Density Index levels for reverse osmosis. The successful development of the DT module was only made possible by a precise technical appraoch in developing the total RO system. ROCHEM possess the rare capability of being both the module manufacturer and the systems manufactuer. This dual capability, plus direct contact with the end user, is of great advance to the customer.
xx .. xx .. xx
Why is the ROCHEM DT MODULE SYSTEM
The best choice in RO?
Firstly, the patented fluid dynamics and construction of the disc membrane stack result in an open channel, unrestricted and fully turbulent feedwater flow system. This means that suspended solids carried in the feedwater cannot be trapped or easily settle out inside the membrane module. Most importantly it also means that the infrequent and highly successful maintainence cleaning of the membraines can be achived using a standard inbuilt cleaning system.2
Rochem Group SA is not the Plaintiff and does not claim any right in the subject trademarks. Plaintiff also does not claim any right through them.Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 6 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12
Secondly, ROCHEM is committed to the use of only the highest quality of components materials and methords of design and construction to ensure for the end user 24 hours per day reliabilty and product water quality.
[Emphasis supplied]
8. Interestingly, from the above, it appears that Plaintiff itself uses its registered marks in a purely descriptive manner, as is evident from documents on record filed by the Defendant. The said documents also demonstrate that apart from Plaintiff and Defendant, several other enterprises are employing use of 'Disc Tube'/ 'DTRO' in similar descriptive manner to identify the characteristics of the product and technology used therein.
Third-party and industry-wide use of the Disc Tube technology
9. Apart from the above, several other documents relating to the products in question demonstrate use of words 'Disc Tube', in a purely descriptive/ generic sense. Such examples are extracted below: -
(i) A Technical Paper presented in a conference held on 11th-13th June, 1991,3 has several references to 'ROCHEM Disc Tube Module Type DT'.3
Paper titled - 'PURIFICATION OF LANDFILL LEACHATE BASED ON REVERSE OSMOSIS AND ROCHEM DISC Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 7 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 This document is prior to Plaintiff's claim of adoption of the mark in India i.e., in 1993:
"SUMMARY The ROCHEM Disc Tube Module Type DT is a innovative module system for reverse osmosis applications in desalination and purification of liquids that can operate effectively and economically at increased turbidity and Silt Density Index levels.
The disc-membrane stack of this module is assembled using hydraulic discs alternating with membrane cushions on a central tension rod with metal end flanges and is covered by a standard 8 inch pipe. This design allows for an easy alteration of module length and tube materials and facilitates inspection or changing of membranes in a quick and easy manner. The open feed channel between the hydraulic disc and the membrane surfaces ensures an unrestricted feedwater flow and consequently an optimal membrane cleaning from fouling deposits.
The open channel ROCHEM RO DT module can operate without problems on sea water which has been pretreated only with normal mechanical filters such as a sand filter and a cartridge filter, usually making acid and antiscalant pretreatment unnecessary. Due to the low pretreatment requirements of the module, it can be used for industrial waste water applications like landfill leachate purification.
Design details of the DT module and results from practical field work in landfill leachate applications are discussed.
xx .. xx .. xx
4. FUTURE
The combination of an open channel design with the narrow gap technology and a new membrane cushion concept in the advanced ROCHEM module system type DT (Disc-Tube) makes possible the use of reverse osmosis in applications like desalination, industrial waste water treatment or aqueous fluids processing, even if the water to be treated has a high Silt Density Index respectively high turbidity. Furthermore the high flexibility regarding the choice of material for the membrane and the other module components allows the adaptation of reverse osmosis systems to particular problems within a wide range of chemical, physical and technical requirements, like it is necessary for a successful treatment of landfill leachate.
The cost effective operation because of comparatively low energy TUBE MODULE DT' in 'US Environment Protection Agency's Third Forum on Innovative Hazardous Waste Treatment Technologies: Domestic and International' at Dallas, Texas, USA.Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 8 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12
and chemicals demand, a favourable price/performance ratio and the convenient results obtained during operation of this type of module for cleaning landfill leachate demonstrate the innovation potential and the growing importance of reverse osmosis technology in environmental engineering and pollution control."
(ii) Report on 'Performance Evaluation of ETPs and Hazardous Waste Management in Pharmaceutical Industries' presented by Zonal Office (Central), Central Pollution Control Board, Bhopal, on 31st January 2014, wherein DTRO (Disc-Tube R.O. System) is discussed, is extracted below:
"• DTRO (Disc-Tube R.O. System):-
It operates effectively and economically in high silt index wastewaters. The disc design dramatically reduces fouling and scaling Suspended solids found in the feed waste water cannot easily settle out on the membrane surfaces due to the short, and turbulent flow system. In the standard DTRO module, hydraulics results in a high flow velocity across the membranes at minimum feed flow. Further, the open feed channel over the membrane surfaces enables optimal membranes cleaning from fouling that are present. In addition, the standard DTRO design allows for more thorough and efficient cleaning."
10. Therefore, it prima facie appears that the phrase/ expression 'Disc Tube Membrane (DTRO) System' and 'DTRO' are deployed by manufacturers and other parties dealing with the product in a descriptive sense. The Plaintiff, the Defendant, as well as others in the field, prefix their own trademark (eg: 'ROCHEM', 'INDION', etc.) to provide clarity as to source of technology/ product. Thus, use of the infringing marks being purely descriptive of the characteristics of the goods cannot amount to infringement.
11. Plaintiff claims to be the 'protagonist' (inventor) of the 'Disc Tube' Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 9 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 Model technology. The same was in fact patented, and term thereof has lapsed. Keeping this fact in mind, the holding in McCain International Ltd v. Country Fair Foods Ltd and Anr.,4 before the Court of Appeal (ref: to Cellular Clothing Company v. Maxton & Murray),5 on page No. 75-76, is squarely applicable to the facts of the present case. The same reads as under:
"Similarly in the same case at page 344, again in words I find helpful in the present case because they deal with the invention of an new product, Lord Davey said this:
...where a man produces, or invents, if you please, a new article and attaches a descriptive name to it - a name which, as the article has not been produced before, has, of course, not 45 been used in connection with the article - and secures for himself either a legal monopoly or a monopoly in fact of the sale of that article for a certain time, the evidence of persons who come forward and say that the name in question suggests to their minds and is associated by them with the plaintiff's goods alone is of a very slender character, for the simple reason that the plaintiff was the only make of the goods during the time that his monopoly lasted, and therefore there was nothing to compare with it and anybody who wanted the goods had no shop to go to, or no merchant or manufacturer to resort to, 5 except the plaintiff....If a man invents a new article and protects it by a patent....he has a legal monopoly; but when the patent expires all the world may make the article, and if they may make the article they may say that they are making the article, and for that purpose use the name with the patentee has attached to it....."
No likelihood of confusion
12. The Supreme Court in Khoday Distilleries Limited (Now known as Khoday India Limited) v. Scotch Whisky & Ors.,6 held that class of purchasers and degree of care which is likely to be exercised while purchasing or using the goods, must be weighed to gather the likelihood of confusion. Plaintiff and Defendant supply its goods and related services to 4 (1981) RPC 69.
5(1899) A.C. 326.
Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 10 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12industries and commercial plants; essentially dealing in B2B (business-to- business) transactions. The products in question are being sold by parties in trade fairs/ exhibitions, conferences, etc. and thus, such goods cannot be compared with goods which are available over-the-counter. Customers for industrial wastewater treatment/ desalination plants are expected to be well- versed in extant RO technology relating to the same, and presumably, take decision after a careful study of credibility and trustworthiness of the company, providing goods and related services. This makes it highly improbable that during such a decision-making process purchasers would be confused by mere use of the words 'Disc Tube' or 'DTRO' on the Defendant's product. Thus, there is no likelihood of confusion between the goods sold by Plaintiff vis-à-vis those sold by Defendant. Hence, Defendant's activities do not constitute passing off.
Alternative/ generic alternative term "Plate and Frame" instead of "Disc Tube"
13. Plaintiff has also contended that the impugned product of Defendant is based on principle of Reverse Osmosis (RO). One of the four kinds of RO processes, used in the impugned product, is an advanced 'Plate and Frame'/ 'Filter Press' technology. The generic term 'Plate and Frame' has been used by at least 22 companies in India. Plaintiff also points out that Defendant has described its goods as 'Plate and Frame' in its Business Agreement, and thus, contends that Defendant should adopt the said synonym instead of the mark in question. This argument is wholly devoid of merit. The existence of other generic alternatives or synonyms in the market, or its utilization by 6 2008 (37) PTC 413 (SC).
Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 11 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12other companies to market its products, is no ground to compel the Defendant to adopt the same, especially in the absence of any case made out by the Plaintiff in the foregoing paragraphs.
Suppression qua conditions /disclaimers in registration of marks
14. It also needs to be underscored that trademark 'DT DISK TUBE' under No. 795023 in Class-07 is registered with the condition that it grants no exclusive right to the Plaintiff for use of the word 'DT' as well as 'TUBE'. Registered mark 'DT DISK TUBE' under No. 1221976 in Class- 11, also contains a condition that the registration grants no right to Plaintiff for words 'DISK TUBE'. Similarly, trademark 'DISK TUBE' under No. 795024 in Class-07, is registered with the condition that it grants no exclusive right to the Plaintiff for use of the word 'TUBE'; and mark 'DISK TUBE' under No. 795026 in Class-11, also has an identical condition. However, Plaintiff has made no disclosure of the above conditions in its plaint or oral arguments; instead, a false impression has been made qua Plaintiff's right over the trademarks 'DT DISK TUBE' in Class-07 and Class-11, 'DISK TUBE' in Class-07 and Class-11. These disclaimers in registrations indicate that no exclusive right vests in favour of the Plaintiff in words 'DISK' or 'TUBE'.
Decision of the High Court of Bombay against the Plaintiff - Rochem Separation Systems (I) Pvt. Ltd. v. Tas Engineering Co. Pvt. Ltd.7
15. It must also be noted that in somewhat similar circumstances, Plaintiff filed a suit against one Tas Engineering Co. Pvt. Ltd. before the Bombay Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 12 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12 High Court, inter alia, seeking to restrain Defendant from using the mark 'DISK TUBE'. The ex-parte injunction initially granted was subsequently vacated, holding that the words 'Disc' and 'Tube' are descriptive of the technology employed, and had not obtained any distinctiveness.
16. Lastly, we shall deal with Federal Brands Ltd. (supra) wherein owner of mark "LIVE-IN" jeans filed a suit against Levi's Strauss India Pvt. Ltd. for infringement of copyright and ancillary reliefs. There, Federal Brands contended that even use of descriptive marks can be injuncted, if they are capable of invoking a connection with the trademark owner. The grievance of Federal Brands Ltd. was qua marketing advertisements used by Levi's Strauss India Pvt. Ltd., which were using the mark - "LIVE IN LEVI'S". The Court found that mark used was neither generic nor descriptive of the nature or quality of the goods (apparel). In the instant case, words 'Disc Tube Membrane (DTRO) System' and 'DTRO' are commonly used and understood by purchasing public as descriptive of the technology and thus, the judgment relied by the Plaintiff is of no assistance to it.
Conclusion
17. For the fore-going reasons, Plaintiff has failed to make out a prima facie case in its favour; balance of convenience does not lie in its favour; rather it lies in favour of the Defendant. Irreparable injury would be caused to the Defendant in case an injunction is granted.
18. Accordingly, the application is dismissed.
7MANU/MH/0058/2001.
Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 13 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12CS(COMM) 548/2019 & I.A. 2660/2020 (u/ Sec. 124(1)(ii) of the Act r/w Sec. 152 of CPC)
19. Re-notify on 02nd February, 2023.
SANJEEV NARULA, J DECEMBER 7, 2022 d.negi [Corrected and released on: 16th December, 2022] Signature Not Verified Digitally Signed CS(COMM) 548/2019 Page 14 of 14 By:SAPNA SETHI Signing Date:16.12.2022 18:56:12