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
16th 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
30th May 1986 obtained the mark FIELDMARSHAL, which was
earlier registered by M/s Jain Industries on 13th 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
2nd 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 30th 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
13th 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.
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منبع: http://www.mondaq.com/Article/1462018