02 Jul If a technology and process has been universally adopted by several manufacturers can the prior user principle be applicable, more so, when the suit is filed on the ground of passing off and not on infringement of any existing patent right or design right??
Indcon Structurals Pvt. Ltd. V/S Beton Tile Company
The present suit is filed by the appellants Indcon Structurals Pvt. Ltd. in the Honourable High Court of Madras before Honourable Justice Dr. G. Jayachandran, who lost the suit filed for permanent injunction restraining the respondents from any manner passing off the product by name ‘Diana’ with butch work on pre-polished cement concrete wall tiles and for rendition of account. [Appeal Suit No. 499 of 2005, Decided On: 30.03.2021]
This appeal is by the appellants, who lost the suit filed for permanent injunction restraining the respondents from in any manner passing off the product by name ‘Diana’ with butch work on pre-polished cement concrete wall tiles and for rendition of account.
The plaint averments are, the appellants are the largest manufacturer of pre-polished cement concrete tiles in India and they are carrying on business since 1984. They are manufacturing and marketing different types of tiles under the trade mark “EUROCON” which is a registered trademark under Act. In the course of their business, the appellants have developed a particular variety of tile, which is manufactured and marketed under the trade name/trademark ‘MONALISA’ from 1993. The uniqueness and specialty of this tile stems from the craft of butch work, which has been done to the tiles. According to the appellants their company invented the manufacture of tiles with butch work in pre-polished cement concrete wall tiles instead of artificial stone.
The butch work in pre-polished cement concrete manufactured and marketed by the appellants’ company has been identified with the appellants’ company exclusively. The contention of the appellants is that they came across the cement concrete tiles with butch work manufactured and marketed by the respondents which were an exact imitation of the appellants company’s unique tiles with butch work.
According to the appellants the said action of the respondents in manufacturing and marketing a slavish imitation of cement concrete wall tiles with butch work is illegal and amounts to passing off by creating confusion in the minds of the trade and the consuming public.
The respondents filed written statement wherein the averments made in the plaint were stoutly denied. According to the respondents the appellants are not entitled to claim monopoly over the same and the appellants cannot acquire any proprietary right over the manufacture of pre-polished concrete tiles with butch work whether the butch work is manual or semi-automatic.
The claim of the appellants that the cement concrete tiles with butch work have come to be associated exclusively with them is false and no company can claim a monopoly over the manufacturing process, which is common to the trade and not the subject matter of a patent. The respondents further stated that they commenced manufacturing pre-polished cement concrete tiles with butch work in the year 1996. According to the respondents the size and weight of the tiles manufactured by the appellants’ company in the name of ‘MONA LISA’ is different from the tiles manufactured in the name and style of ‘DIANA’ by the respondents.
The respondents’ product varies from that of the appellants’ product in respect of size, colour, scheme and get up. Therefore, there is no likely hood of deception and there is no intention to deceive by passing off the goods of the respondents’ as that of the appellants’. The products of the respondents ‘are not slavish imitation of the appellants’ product. Further according to the respondents, they have etched the name ‘BETON’ in every tile in order to identify the trade connection and to avoid any confusion. Therefore, the question of deception does not arise. The respondents alleged that the suit was filed by the appellants to gain illegal monopoly over the manufacture of pre-polished concrete cement tiles with butch work by eliminating competition.
The trial Court, after considering the evidence, held that the products of the appellants and the respondents were not one and the same. Butch work was done on natural stones earlier and later done on artificial stone by use of technology. Also the appellants admitted that before manufacturing and marketing pre-cast concrete tiles with butch work, natural stones with butch work were marketed. Therefore, the averment of passing off the product of the respondents as that of the appellants was not proved and there was no evidence to hold that the imitation caused confusion in the mind of the trade and consumer.
Aggrieved by the above finding, the appellants submitted that the trial court had not properly appreciated the evidence and the law of passing off, while distinctive case made against the respondents.
According to the present court, it stated that as far as the facts involved in the instant case, thrust was on the manufacturing process of the artificial tiles with butch work. As pointed out in the written statement of the respondents, neither manufacturing process was registered under the Patent Law nor the design found on the tiles ‘MONOLISA’ was registered under the Designs Act. Further by placing before the Court the samples of their product as well the appellants’ product, the respondents had proved before the Court that their size, scheme and texture were different and they had no intention to sell their product as that of the appellants’. They had their unique size and texture. Mere use of butch work technology on artificial stone would not amount to passing off as the butch work technology was known universally and applied universally.
According to the court in the present suit the prior user principle would not apply to the case of the appellants. More so, when the suit was filed on the ground of passing off and not on infringement of any existing patent right or design right. Hence this court on considering the pleadings and evidence, found that the trial court had rightly dismissed the suit and there was no material to interfere with the trial court’s judgment in the appeal. Accordingly, the appeal suit was dismissed.
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