A 40-year Trademark Dispute

FORTY-YEAR OLD DISPUTE: FINDING CLOSURE

The Hon’ble Delhi High Court recently disposed off a plethora of proceedings pertaining to the trade mark ‘FIELD MARSHAL’, between P.M. Diesels Private Limited and Thukral Mechanical Works by way of a common order, thereby logically concluding the disputes which were continuing since the year 1985. Pertinently, the Delhi High Court has yet again recognized one of the most significant principles of Indian Trade Marks Law that priority in adoption and use must be accorded the highest level of protection under The Trade Marks Act, 1999.

The Delhi High Court, in P.M. Diesels P. Ltd vs. Thukral Mechanical Works and Others (1), specifically observed as follows:-

“P.M. Diesels was the prior adopter and prior user of mark for diesel oil engines especially user of the mark for diesel engines, for pumps, motors and for several other similar products. Moreover, the mere fact that the suit was filed in 1985 and has continued to remain pending for the last several years, would not in any manner disentitle P.M. Diesels from a permanent injunction.”

The Court further observed that :-

“…P.M. Diesels has been able to prove its prior user and adoption of the mark ‘FIELDMARSHAL’. This issue is decided against Thukral.

BACKGROUND OF THE CASE

The background of this legal dispute dates back to the year 1985 when P. M. Diesels Private Limited had filed the suit being Suit No. CS (OS) 2408/1985 against Thukral Mechanical Works praying for injunction against the use of the mark ‘FIELD MARSHAL’ or any other mark deceptively similar to the Plaintiff’s registered trade mark ‘FIELD MARSHAL’ and against the passing off diesel engines and parts thereof such as pumps and electric motors under the plaintiff’s trade mark ‘FIELD MARSHAL’.

According to the plaintiff, the trade mark ‘FIELD MARSHAL’ was adopted and being used by the plaintiff since the year 1963 for diesel oil engines and related goods. The said trade mark was registered in its favour with effect from 1964. The plaintiff became aware of the Defendant’s application for registration of the trade mark ‘FIELD MARSHAL’ and issued a legal notice to the defendant. Thereafter, it also became aware of the fact that the defendant obtained or secured a nameplate from the market in December 1985 under the mark ‘FIELD MARSHAL’. Thereafter, the plaintiff filed the instant suit and the court granted an ad interim injunction in favour of the plaintiff restraining the defendant from manufacturing or selling goods under the trade mark ‘FIELD MARSHAL’.

Thereafter, there were multiple proceedings which had taken place in connection with the dispute relating to the trade mark ‘FIELD MARSHAL’ , including a civil suit, a rectification proceeding and ten writ petitions, involving numerous issues in order to decide as to who has a better right in the trade mark ‘FIELD MARSHAL’.

OBSERVATION OF THE COURT

The Delhi Court, after detailed consideration of all the thirteen proceedings, ruled in favour of the Plaintiff whereby the defendant was permanently restrained from using the mark ‘FIELD MARSHAL’ and all the other proceedings were also ordered in favour of the plaintiff.

The Court upheld prior and superior rights of the plaintiff essentially owing to the fact that the Plaintiff had produced materials on record which would establish that its adoption and use of the trade mark ‘FIELD MARSHAL’ was way prior to the defendant’s and therefore, it is the right of the plaintiff in the trade mark ‘FIELD MARSHAL’ which must be protected from any sort of violation or infringement and not the defendant’s, who had not shown anything which would in any manner establish that it had adopted or has been using the mark ‘FIELD MARSHAL’ prior to that of the plaintiff. Considering the allied and cognate nature of products it was held that the chances of passing off and confusion in the instant case are very high.

The Court also made reference to the landmark judgment of N.R. Dongre vs. Whirlpool Corporation (2), wherein it was observed that “….section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same.”

Therefore, the Court upheld the proprietary rights of the plaintiff in the trade mark ‘FIELD MARSHAL’ and also ordered all of its trade mark applications forming a part of the present dispute to proceed to registration.

CONCLUSION

The Delhi High Court’s judgment in the instant case, would be considered as a landmark judgment not only due to the fact that it brought an end to a long-lasting dispute which was continuing for decades, but it put light on the most noteworthy aspects of the Trade Marks Law in India, being ‘bona fide adoption’ and ‘priority in use’. The judgment would serve as a precedent in India’s ever evolving legal landscape as the same also recognizes the true purport of ‘true and lawful proprietor’ of a trade mark under Section 18 of The Trade Marks Act, 1999(3) and the significance of protecting the same.

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1 P.M. Diesels P. Ltd vs. Thukral Mechanical Works and Others, 2024 SCC OnLine Del 2432
2 N.R. Dongre vs. Whirlpool Corporation, (1995) 34 DRJ 109 (DB)
3 The Trade Marks Act, 1999 ( Act 47 of 1999)

Aayush Sinha

Having being a part of the firm for almost 3 years, Aayush is one of the active members in the trademarks opposition team who handles opposition proceedings and cancellation actions from time to time. Besides, he also assists the litigation team in matters concerning trade marks and also handles matters at the prosecution stage. He is also involved in recordal of Intellectual Property Rights before the Customs Office. He also takes great interest in educational activities and workshops conducted by the firm such as Moot Court Competitions and Workshops on the various aspects of IPR.

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