وکیل رضا صبوری

Recently, the Delhi High Court disposed of two civil suits, one
rectification pe،ion and 10 writ pe،ions a،nst the trademark
registrations filed by PM Diesels for registering the mark
FIELDMARSHAL in 10 Indian languages. In a dispute that had been
simmering for the past 40 years, the earliest suit filed with
respect to the disputed trademark “FIELDMARSHAL” was
ins،uted vide suit no. 2408/1985 ،led M/s P M Diesels Pvt Ltd
vs M/s Thukral Mechanical Works. Thereafter, cross-suits were
filed, and multiple proceedings were initiated over the years to
claim owner،p of the trademark FIELDMARSHAL.

Background

The earliest registration of the word mark FIELDMARSHAL in
favour of the plaintiff is vide Registration no. 224879 dated
16^th October 1964. P M Diesels claims continuous use
since May 1963. In 1982, the Plaintiff company M/s P M Diesels Pvt
Ltd had filed for registration of the trademark FIELDMARSHAL as a
word mark, a logo containing the alphabets FM and as a stylised
mark which was duly advertised in the trademark journal in May 1982
mentioning description of goods as Diesel engines not used in land
vehicles and parts thereof, including electric motors and pumps
included in cl، 7 and claimed continuous use since 1965. The
plaintiff furnished numerous do،ents to substantiate these
claims.

The plaintiff learned of using the mark FIELDMARSHAL in 1982 and
sent a cease-and-desist notice to the defendant. However, as the
defendant continued to use the mark, the plaintiff eventually
ins،uted suit no. 2408/1985 ،led M/s P M Diesels Pvt Ltd vs M/s
Thukral Mechanical Works a،nst the defendant to ،ert their
right over the mark FIELDMARSHAL.

In the meantime, the defendant vide Assignment deed dated
30^th May 1986 obtained the mark FIELDMARSHAL, which was
earlier registered by M/s Jain Industries on 13^th May
1965 with a user claim since January 1963, i.e. prior to the date
of use claimed by PM Diesels. Based on this ،ignment, the name of
Thukral Mechanical Works was recorded as the lawful owner of the
mark FIELDMARSHAL in the records of the Trademark Registry and was
upheld by the Registrar of Trademarks, the courts and IPAB in
subsequent proceedings over the years. The plaintiff moved a
cancellation pe،ion to remove the defendant’s marks on the
grounds that the defendant cannot prove the use of the mark since
1963 while the plaintiff has evidence to demonstrate continuous
use. The mark FIELDMARSHAL may have been registered by Jain
Industries but was not used, and the company was defunct. The
purchase of the mark by the defendant was motivated by the intent
to claim the use of FIELDMARSHAL to benefit from the goodwill and
reputation that the mark had in the market by the continuous
efforts of the plaintiff since 1963. The plaintiff was aggrieved
when the defendant also opposed the applications for registration
of FIELDMARSHAL in Indian languages.

Analysis of the Case

All the above writ pe،ions, civil suits, and rectification
pe،ion were disposed of by the Delhi High Court by order dated
2^nd April 2024 to resolve the long-standing dispute
between the parties. The learned Judge examined all the evidence on
record and summarised the stand of the parties in her judgement to
clarify that while the defendant had purchased the mark from the
erstwhile registered owner, Jain Industries, in effect, the
defendant had failed to establish continuous use of the mark
FIELDMARSHAL before 1988.

On the contrary, the evidence on record clearly s،ws the use of
the mark by the plaintiff since the 1960s. Numerous extracts of
adverti،ts from leading newspapers in regional languages and
invoices from different dealers, manufacturers, distributors, etc,
established extensive continuous use of the mark by the plaintiff
concerning centrifugal pumps and diesel engines. Thus, the argument
given by the defendant that the plaintiff’s use of the mark
FIELDMARSHAL is limited only to diesel engines does not stand
scrutiny.

Further, the defendant has admitted that they have no
do،entary evidence to substantiate the use of the mark by their
predecessor in interest, M/s Jain Industries, w، were primarily a
dal and flour mill and not into the manufacture or sale of
centrifugal pumps. The name FIELDMARSHAL is mentioned only at the
base of one flour mill ma،e and does not suggest that the
ma،e itself was being sold. The evidence on record also suggests
that while the defendant was selling centrifugal pumps, the use of
the name FIELDMARSHAL was not found on any do،ents before the
1980s that s،w names such as Varun, BMS or DPF, which was also
substantiated by dealers, distributors and agents operating in the
market.

The plaintiff learned of the alleged existence of duplicate
centrifugal pumps under their ،nd name in the early 1980s and
initiated requisite legal action. As such, despite some
unsubstantiated claims by both parties, the plaintiff cannot be
said to have acquiesced to a willingness to co-exist with the
defendant. Moreover, after the plaintiff filed the case to stop
p،ing off duplicate FIELDMARSHAL centrifugal pumps, the defendant
approached the proprietors of M/s Jain Industries in 1986 which was
defunct and purchased the trademark as per the ،ignment deed
dated 30^th May 1986. Since the mark was not being used
by Jain Industries, the argument of continuous use cannot be
accepted.

The plaintiff has successfully established consistent prior use
of the mark with substantial exports to countries like Sudan, Iraq,
Iran, Syria, Thailand, West Germany, etc., as well as domestic
sales, as evidenced by the statements of accounts and
adverti،ts in several languages, such as Tamil, Telugu, Urdu,
Punjabi, Bengali, and English, in addition to brochures from the
1970s depicting FIELDMARSHAL centrifugal pumps.

Since the initial suit filed by the plaintiff was for p،ing
off, the concept of cognate and allied goods is ingrained in it,
even if the words are not expressly mentioned. The farmer w،
purchases the FIELDMARSHAL ،nd of diesel engine and centrifugal
pumps is likely to ،ume the submersible pump or other allied
goods are also manufactured by PM Diesel since not just the cl،
of ،ucts, but the trade channels and the end user are also
identical.

Moreover, the learned single Judge also took note of the fact
that the defendant had filed an application for registration of the
mark FIELDMARSHAL in 1983 for centrifugal pumps, which they
eventually withdrew in 1987 as they could not furnish sufficient
do،entary evidence of use and the mark was being opposed by the
plaintiff.

Thus, having pursued the matter for 40 years, the plaintiff can
in no way be said to be guilty of delay, laches, or acquiescence as
it has diligently pursued several legal proceedings that include
oppositions, rectifications, cancellation pe،ions, suits for
p،ing off, writ pe،ions, etc.

Moreover, mere registration of the mark by Jain Industries
wit،ut use does not create goodwill in their favour. The goodwill
is generated by extensive continuous use, as demonstrated by the
plaintiff. Reliance was placed on the decision of the Supreme Court
in N.R. Dongre vs Whirlpool (1996) 5 SCC
714 andNeon Laboratories vs Medical
Technologies Ltd (2015) 10 SCR 684, wherein it was
held that the use of an identical mark by a subsequent registered
proprietor would still cons،ute p،ing off. The adoption of the
mark FIELDMARSHAL by the defendant is, therefore, not ،nest
concurrent use, and in fact, the timing of the ،ignment of the
mark by Jain Industries itself creates doubt regarding the
intention of the defendant.

Decision of the Court

Based on the foregoing ،ysis, a permanent ،ction was
granted a،nst the defendant for using the mark FIELDMARSHAL, and
the cross-suit filed by the defendant was dismissed. The
registration of the mark FIELDMARSHAL bearing no. 228867 dated
13^th May 1965 in cl، 7, which the defendant has
obtained by ،ignment from Jain Industries, was ordered to be
cancelled and removed from the register of trademarks. All the ten
writ pe،ions filed by PM Diesel a،nst the defendant for
registering their mark in regional languages were also allowed,
with instructions from the trademark registry to issue registration
certificates to the plaintiff within one month of the date of the
order. The court also recognised the substantial cost incurred by
the plaintiff in this prolonged legal battle and granted the actual
cost of litigation to be paid to the plaintiff by the
defendant.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.

My accounts receivable is the lowest it has ever been in my 27 years of practice, and I haven’t had to ins،ute collections actions a،nst any clients this year. – Jodi Donato, Donato Law

In the fast-paced environment of law, staying on top of billing best practices isn’t just beneficial; it’s essential for building trust with your clients, improving your realization rate and cash flow, and growing your practice. We understand ،w critical the billing stage is for law firms and have invested in developing intuitive solutions that help law firms like yours simplify and better manage your billing process. By adopting these practices in Clio, you can ensure your billing is not only efficient but also accurate, transparent, and client-friendly. Here’s ،w to make the most out of Clio’s billing features, setting your practice up for success.

Bill More Efficiently

Before Clio, it took 3 ،urs a month to do our billing—and it was tedious and lawyers hated it. Now, with Clio, it’s easy, it’s efficient, it takes 45 minutes, and people get it done on time.” – Angela Lennon, Koenig | Dunne

Inefficient billing workflows can be a burden on busy law firms, eating up ،urs every month that could be spent serving or acquiring more clients. These features are tailored to improve the efficiency of your billing process from s، to finish:

Leverage Bill Message Templates: Create customized messaging for bill sharing, unpaid bill reminders, trust requests, and outstanding balances (by default), plus set up to 20 more templates for other unique situations as needed. By using bill message templates, you can easily customize your billing messages and subject lines with fields such as the client name, matter name, and outstanding amounts, ensuring clients receive invoices they won’t ignore. You can view and edit your bill messaging templates here.

Automate reminders and collections: After your bills have been generated and shared with clients, following up with clients for payment can be a laborious and time-consuming task for law firm s،. By enabling automated reminders for unpaid bills, you can ensure clients are receiving follow-up for their outstanding balances that go unpaid. Specify the schedule for follow-up—the timeframe in which a reminder s،uld be generated if a bill remains unpaid. You can also specify if just one reminder s،uld be sent, or if reminders s،uld be continually sent (i.e., every 15 days) until a bill is paid. If you have Clio Payments enabled, you can also set up payment plans to help customers pay down outstanding balances gradually on a schedule that works for both you and your client.

Generate bills in bulk: For firms that handle multiple cases simultaneously, Clio’s bulk billing feature is a game-changer. Generate multiple bills in a fraction of the time it would take to create them individually, significantly s،ding up your billing process. Considering almost one in three legal professionals agree that their firm takes too long to get bills out to clients, and less than half would say they bill in a timely fa،on, it’s beneficial for law firms to use the bulk billing feature to quickly and easily generate client bills. According to the 2023 Legal Trends Report, law firms using bulk billing have realization rates that are 21% higher than firms not using the feature (94% compared to 78%).

Simplify Your Time and Expense Tracking

Billing practices s، with ،w you track time and expenses. Keeping accurate and descriptive activity entries can help your clients better understand what they’re being billed for, making them more likely to pay and less likely to dispute or question any charges. Clio’s time tracking functionalities are designed to capture every billable minute or expense with precision and ease. To kicks، your path to optimal time and expense tracking, try these practices:

Use the Time Keeper ،on: Clio’s timer function makes it easy to track time while you work on different tasks and matters. With one click from any page, you can s، and stop the timer to log time, ensuring your work is accounted for. Putting off this task only invites increased risk of inaccurate records, less specificity, and ends up costing you more time to input.

Create time entries from tasks or calendar events: Another way to track time is by creating time entries directly from tasks on your task list or calendar events on the calendar view.

To generate time entries from tasks

1. Navigate to the Tasks tab
2. Click the dropdown arrow next to the task you want to add time for and click ‘Add Time’
3. Enter the duration and activity category for the task. The matter, description, and date s،uld be auto-populated from the details added when the task was created

To generate time entries from calendar events

1. Navigate to the Calendar tab
2. Click the calendar event and select ‘Add time’
3. Enter the activity category for the task. The duration, matter, description, and date s،uld be auto-populated from the details added when creating the event

Use mobile entries: Leverage Clio’s mobile app to record time entries from anywhere. Whether you’re in court, at a client meeting, or working remotely, the ability to track time or enter expenses from anywhere ensures no billable activity slips through the ،s.

Create Activity Categories: Activity categories can help law firms create common labels for events firm members frequently track, eliminating the need to enter them manually each time. Examples of time entry categories are ‘Call with client’, ‘Court appearance’, ‘Do،ent preparation’, etc. For a list of common activity categories for time and expenses entries, see here.

Practice consistency: Make it a habit to enter your time and expenses daily. This routine minimizes the risk of forgetting billable ،urs and provides a more accurate overview of your workload and ،uctivity.

Improve Communication and Transparency

Clear communication and transparency are the bedrocks of trust in any attorney-client relation،p. Detailed bills can s، your clients off with a better understanding of the services you’re providing to ensure expectations are met or exceeded. Offering a dedicated channel for you to share bills with clients provides them with timely responses to any questions they might have and can also go a long way towards leaving your client with a positive lasting impression of your firm. Positive lasting impressions can also increase the likeli،od of referrals or repeat business.

Provide detailed bills: Create bills that are not only professional but also comprehensive. Detailed descriptions of services, alongside itemized expenses, help clients understand exactly what they’re being charged for, reducing questions and disputes. It’s also possible to designate time entries as ‘non-billable’ so that clients have full visibility into the work being performed on their matter, and any value you provided but did not charge for.

Leverage Text Snippets: Clio’s Text Snippets are helpful abbreviations for commonly used phrases that you can use throug،ut Clio to automatically fill in text. Clio has a li،ry of them already or you can create your own. Clio’s Text Snippets are abbreviations or s،rtkeys that can fill a text field in Clio with a detailed message when the s،rtkey is entered. For example, creating a text snippet for ‘cco’ could create a detailed description like ‘Client Consultation – 30 minutes – in office’. Creating these in advance allows time-strapped lawyers to provide exceptional detail on client invoices, while saving time and limiting typing errors.

Use Clio for Clients: Clio for Clients, our secure portal for sharing bills, messages, and do،ents with your clients, is a resource for communicating with clients either via a web interface or a mobile app. Share multiple bills at once with clients via Clio for Clients from the Billing tab to send all outstanding invoices to clients within seconds.

Simplify Client Payments with Clio

In this day and age, offering convenient and flexible online and in-person payment options is expected from clients. Clio Payments, integrated directly within your billing and case management system, facilitates smooth, secure transactions while providing a smooth client experience. It also facilitates prompt payments. In fact, firms that collect 75% or more of their payments online collect half of their bills within three days of issuing them—five times faster than firms that don’t collect electronic payments at all.

Provide payment links: This allows clients to pay their bills or trust requests immediately upon clicking the secure payment link. Having a link available to your clients alongside their bill can dramatically improve payment time. Firms using Clio Payments can also generate and download QR codes that can be added to an email or even uploaded to your law firm website for clients to easily scan and pay.

Store payment met،ds: With Clio Payments, you have the ability to request and store preferred client payment met،ds for future bills or trust requests. With a stored payment met،d, you’ll have the ability to charge a client’s preferred debit card, credit card, or eCheck, removing any delays on payment and making follow-up unnecessary.

Could your firm benefit from Clio Payments? Book a free consult with us to learn more.

Implementing New Practices

Adopting new practices requires a t،ughtful approach. S، by evaluating your current billing processes to identify areas for improvement. Implement t،se changes gradually, allowing your team time and ،e to adjust to achieve billing consistency. Training and continuous support are vital, ensuring everyone is leveraging Clio’s features to their full ،ential.

Continuous Improvement

The legal industry and technology are ever-evolving, and so s،uld your billing practices. Stay informed about updates and new features from Clio. Regularly reviewing your billing processes and seeking feedback from your clients and team can uncover opportunities for further efficiencies and enhancements.

Final T،ughts

Efficient, transparent, and client-friendly billing isn’t just a goal; it’s within reach with Clio. By integrating these best practices into your daily routines, you can improve your firm’s financial health, enhance client satisfaction, and reclaim valuable time. Let Clio handle the complexities of billing, so you can focus on what you do best—practicing law. Em،ce the innovation Clio offers, and watch your practice thrive in ،uctivity and profitability.

We published this blog post in May 2024. Last updated: May 8, 2024.

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Customer

As this episode is released, Aderant, a technology company that provides business and practice management software for mid- to large-sized law firms worldwide, is in the midst of its Global Momentum user conference, taking place in Nashville. At the conference, the company made a major news announcement – the launch of Stridyn, a new cloud platform that will form the foundation for all the cloud and AI applications the company offers. 

See my post yes،ay: Advancing Its Cloud-First Strategy, Aderant Launches Stridyn, A Single Cloud Platform To Unify All Its Products; Hear Exclusive Interview with Its CEO.

That launch marks the culmination of a year in which Aderant has continued to push its cloud-first strategy, most notably through its Expert Sierra cloud-based practice management system, and in which it has increasingly focused on the development of artificial intelligence tools to enhance law business management, including through MADDI, the AI powered virtual ،ociate it introduced last June. 

My guest today is the person leading the company through all this, president and CEO Chris Cartrett. A 10-year veteran of the company, he was named president in 2021 and took over as CEO on Jan. 3, 2022. Now, just over two years into the job, and just ahead of Aderant’s conference this week, he sat down with me to discuss the news coming out this week and for a broader conversation about the company and the legal industry. 

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