CARBORUNDUM UNIVERSAL LIMITED Vs. PARTH TRADING COMPANY

JUDGEMENT

(1.) THE plaintiff company having its corporate name as Carborundum universal Limited has filed this suit against the defendant seeking restraint against the defendant from using word 'carborundum' on its goods and has also claimed damages to the tune of Rs. 20 lacs and sought delivery upon affidavit from the defendant of the offending goods. Along with the suit, an application under Order 39 Rule 1 and 2 CPC was filed by the plaintiff. Plaintiff claimed that it was engaged in the business of manufacturing and marketing of coated and bonded abrasive products, refractories and ceramics. The plaintiff had been marketing its goods including grinding wheel carrying the corporate name of the plaintiff. The defendant no. 1 was selling the products of the plaintiff as a dealer. Defendant no. 1 started marketing its own grinding wheel under the name 'pace' with word Carborundum appearing under the word 'pace'. It is pleaded that the use of word Carborundum by the defendant was to pass off the goods of the defendant as those of plaintiff. The defendant intentionally and deliberately adopted and used the word Carborundum without any justification. The plaintiff claimed that the word Carborundum being identical with the corporate name of the plaintiff gave impression that the goods were product of the plaintiff and thus defendant was passing off its goods as those of the plaintiff. The defendant was also deceiving the public and defendant had no right to use distinctive name 'carborundum'.

(2.) THE defendant in its reply has contented that the plaintiff has falsely and wrongfully claimed proprietary of word 'carborundum'. The word 'carborundum' was never used by the plaintiff as a trade mark and was only part of its corporate name. The word 'carborundum' denotes a Silicon compound viz. Silicon Carbide and was not even capable of being registered as a trade mark. The defendant no. 1 was marketing its products under the name 'pace' and word 'carborundum' was being used to describe the compound of the grinding wheel and it has nothing to do with the corporate name of the plaintiff. The use of word 'carborundum' by the defendant gave no cause of action to the plaintiff and the suit was a frivolous suit just to harm the defendant.

(3.) IT is undisputed fact that 'carborundum' is a generic word and is another name of Silicon Carbide which is generally used in manufacturing of industrial abrasive products. The plaintiff adopted its corporate name as carborundum Universal Limited. There is no restriction on the companies in choosing corporate name using generic words. There are several companies who have corporate name like Steel Authority of India Ltd. , Iron Foundries Pvt. Ltd, copper Corporation etc. where the generic names or the name of an alloy or a compound is part of the corporate name. That does not give right to the company having a corporate name using generic word to stop others from using the same word on their products. A person has a right to describe Steel as Steel irrespective of the fact that there is a company called Steel Authority of India ltd. It is for this reason that the law has specifically prohibited registration of names of chemical elements or international non-proprietary names as trade marks under Section 13 of the Trade Marks Act. Section 13 of the trade Marks Act reads as under :