LPA 320/2024 v. PM DIESELS PRIVATE LIMITED & Anr.

Judgment

1. A Brief Prefatory Note – The “Kerly impasse” This batch of appeals presented, before us, a situation, of fact and law, which we have not had an occasion to encounter earlier and for which, despite our research, we have not been able to find any judicial precedent, at least in this country.

2. It is not, however, entirely unexplored, as it manifests what Kerly, in the following classic statement of the law from his authoritative treatise on trade marks1, calls an “impasse”: “Concurrent right … The statutory right of use given by registration of a mark does not provide a defence to proceedings for passing off by the use of the mark; although it is normally expedient for the claimant in such cases to apply to revoke the registration. Where a party applies to register a mark but does not immediately use it, and another party uses the mark and generates sufficient goodwill to support a passing claim prior to the first use by the registered proprietor, an impasse ensues. The proprietor of the mark, if valid, may restrain use by the owner of the goodwill. However, the proprietorship of the mark provides no defence to a passing off claim by the owner of the goodwill, notwithstanding the fact that such goodwill was generated after the application to register the mark.” (Emphasis supplied)

3. Thus, Kerly recognizes the possibility of a situation where, before commencement of user of a registered trade mark by the registrant (whom we may call A), another person (whom we may call B), uses an identical mark, for identical goods, without registration, and acquires goodwill, prior to the commencement of user by A. In 1 Kerly’s Law of Trade Marks and Trade Names LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 such a situation, Kerly states that an impasse results, in which A can injunct B’s user on infringement and B can injunct A’s user on passing off.

4. In the present case, moreover, there exists a pronouncement, by the Supreme Court, holding B to be A’s infringer.

5. We are faced with precisely such a situation. We have not been able, however, to come across any judicial precedent which addresses the issue. It appears, therefore, that the issue is yet res integra.

7. In conspectus, the situation may be stated thus. Jain Industries2 is the proprietor of the trade mark FIELD MARSHAL, with effect from 1965, for centrifugal pumps. Jain, however, never used the mark for centrifugal pumps till 1988, through its successor-in-interest, Thukral Mechanical Works3, to whom it assigned the mark in 1986.

8. PM Diesels Private Limited4 does not hold any registration of the mark FIELDMARSHAL for centrifugal pumps. It, however, commenced using the FIELDMARSHAL mark for centrifugal pumps in 1975. By 1988, when Thukral started using its registered FIELD 2 “Jain” hereinafter 3 “Thukral” hereinafter 4 “PMD” hereinafter LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 MARSHAL mark for centrifugal pumps, PMD had acquired substantial goodwill and reputation.

9. The Supreme Court, in para 36 of its judgment in Thukral Mechanical Works v. P.M. Diesels5, categorically holds that, as Jain was the only registered proprietor of the FIELD MARSHAL mark for centrifugal pumps, PMD, in using the FIELDMARSHAL mark for centrifugal pumps, infringed Jain’s registration. (One of the errors in the impugned judgment, to our mind, is that it completely overlooks this finding of the Supreme Court.)

10. By virtue of the Supreme Court’s finding on infringement, Jain injunct PMD from further use of the would be entitled FIELDMARSHAL mark for centrifugal pumps. The goodwill earned by PMD by the said use cannot be a defence to an injunction, once the use is found to be infringing.

11. Jain, however, never used the FIELD MARSHAL mark for centrifugal pumps, and assigned the mark to Thukral in 1986. Thukral commenced user of the mark for centrifugal pumps in 1988. In the meanwhile, PMD acquired considerable goodwill and reputation in the mark FIELDMARSHAL for centrifugal pumps by dint of continuous user since 1975. 5 (2009) 2 SCC 768 LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

12. By dint of the goodwill so acquired, PMD would be entitled to injunct Thukral from continued user of the FIELD MARSHAL mark for centrifugal pumps on the ground of passing off. This position also flows from the judgment of the Supreme Court in Neon Laboratories v. Medical Technologies Ltd6.

13. This case, therefore, presents, to our mind, a textbook case of the “Kerly impasse”.

14. With that brief prefatory note, we proceed to a more exhaustive discussion of the facts and legal issues involved. Facts II. The dramatis personae

15. PMD was the registered proprietor of the word mark FIELDMARSHAL, in Class 7, vide Registration No. 224879, for diesel oil engines and parts thereof, under Section 23 of the Trade and Merchandise Marks Act, 19587, with effect from 16 October 1964.

16. Jain was the registered proprietor of the word mark FIELD MARSHAL, in Class 7, vide Registration No. 228867, for centrifugal pumps, flour mills, machine couplings, pulleys and valves, with effect from 13 May 1965. 6 (2016) 2 SCC 672 7 “the 1958 TMMA” hereinafter LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

17. Thukral was a partnership firm of Ganga Ram Anil Kumar (HUF), Sunil Kumar and Sumita Rani, registered vide Partnership Deed dated 1 April 1989. With effect from 1 April 1992, the partnership was reconstituted, after which the partners were Ganga Ram, Sunil Kumar and Sumita Rani. Ganga Ram retired from the partnership on 1 April 1999, on which date a fresh Partnership Deed was executed between Sunil Kumar and Sumita Rani. Sunil Kumar retired on 1 April 2002, whereupon Thukral became a sole proprietorship of Sumita Rani. III. Trajectory of Proceedings A. Proceedings relating to Suit 2408/1985 and CO 6/1987

18. PMD instituted Suit 2408/19858 before this Court, alleging that Thukral was manufacturing and selling centrifugal pumps under the mark FIELD MARSHAL and was, thereby, infringing the registered FIELDMARSHAL trade mark of PMD and also passing off its goods as those of PMD. In the said suit, an ex parte ad interim injunction, restraining Thukral from using the mark, was granted by this Court on 19 December 1985.

19. During the pendency of the 1985 suit, Jain assigned its registered FIELD MARSHAL trade mark, along with the goodwill therein, to Thukral, vide Assignment Deed dated 30 May 1986. The 8 “the 1985 suit” hereinafter LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 Assignment Deed recorded the fact that Thukral had been using the FIELD MARSHAL trade mark since 1973.

20. Thukral accordingly applied, to the Registrar of Trade Marks, for substituting its name as the registered proprietor of the FIELD MARSHAL trade mark in place of Jain. Vide order dated 10 November 1986, the Assistant Registrar of Trade Marks allowed the application and registered Ganga Ram Anil Kumar (HUF), Sunil Kumar and Sumita Rani, trading as Thukral, as the registered proprietor of the FIELD MARSHAL trade mark in the Register of Trade Marks, with effect from 30 May 1986.

21. In the interregnum, PMD filed CO 9/1986 before this Court under Section 46(1)(b)9 and 5610 of the 1958 TMMA against Jain in 9 46. Removal from register and imposition of limitations on ground of non-use.— (1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either— ***** (b) that up to a date one month before the date of application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being : Provided that, except where the applicant has been permitted under sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. Power to cancel or vary registration and to rectify the register.— On application made in the prescribed manner to a High Court or to the Registrar by any (1) person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think it. 10 56. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 November 1986, seeking the registration of the FIELD MARSHAL trade mark in favour of Jain be removed from the Register of Trade Marks, as Jain had not used the mark for five years and one month prior to filing of the petition.

22. CO 9/1986 came up before this Court on 16 January 1987, on which occasion Thukral pointed out, to this Court, that its name had been substituted as the registered proprietor of the FIELD MARSHAL trade mark in the Register of Trade Marks in place of Jain. PMD, therefore, sought permission to withdraw CO 9/1986 with liberty to file a fresh rectification proceeding on the same cause of action, which was granted by this Court.

23. Consequent on the liberty so granted, PMD filed CO 6/1987, before this Court, against Thukral, again under Section 46(1)(b) of the 1958 TMMA, without impleading Jain as a party. The petition pleaded that the cause of action for filing it arose in favour of PMD and against Thukral on 16 January 1987, when Thukral informed this Court that it stood substituted as the proprietor of the FIELD MARSHAL trade mark in the Register of Trade Marks.

24. On 19 January 1988, this Court modified the ex parte ad interim injunction earlier granted on 19 December 1985 in the 1985 suit, following Thukral having become the registered proprietor of the FIELD MARSHAL trade mark. Thukral was permitted to use the trade mark, but not to copy the logo/style used by PMD, and also to LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 mention, on each centrifugal pump sold by it under the FIELD MARSHAL trade mark, its name and address (as “Sirhind”).

25. As was subsequently noted by the Supreme Court in para 12 of its judgment in Thukral Mechanical Works, this order dated 19 January 1988 was never challenged.

26. CO 6/1987 was transferred to the Intellectual Property Appellate Board11, which dismissed it on 27 October 2004 on the ground that, as the petition had been filed against Thukral, the period of five years’ non-use would have to reckon from the date when Thukral became the registered proprietor of the mark, i.e. 30 May 1986 and that, therefore, the petition was premature.

27. PMD challenged the said order before this Court by way of WP (C) 19632/200412. Vide order dated 5 July 2005, a learned Single Judge of this Court declined the prayer for stay of operation of the judgment of the IPAB. This order was carried in appeal to the Division Bench of this Court vide LPA 2063/200513. By judgment dated 18 January 2006, the Division Bench allowed the LPA as well as WP (C) 19632/2004, observing and holding that (i) Jain had never used the FIELD MARSHAL mark, (ii) PMD and Thukral alone had used the mark and (iii) Thukral claimed proprietorship of the mark with effect from 30 May 1986 when it was assigned to Thukral by Jain. This 11 “IPAB” hereinafter 12 P.M. Diesels Pvt Ltd v. Thukral Mechanical Works & Anr 13 P.M. Diesels Pvt Ltd v. Thukral Mechanical Works & Anr LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 Court, therefore, set aside the order dated 27 October 2004 of the IPAB and directed the IPAB to decide CO 6/1987 on merits.

28. Thukral challenged the judgment of the Division Bench before the Supreme Court. It was this challenge which was finally adjudicated by the Supreme Court vide the judgment in Thukral Mechanical Works. Proceedings culminating in judgment dated 18 December 2008 B. of the Supreme Court in Thukral Mechanical Works

29. The following observations and findings of the Supreme Court merit reproduction: “19. It is in the aforementioned situation, we are called upon to determine the meaning of the words “for the time being” occurring in Section 46(1)(b) of the Act. Two interpretations thereto which are possible are: (1) The said words would denote non-use of the trade mark in relation to the goods by the appellant for a period of five years or longer; and (2) The mark had not been used for a period of five years or longer either by the present proprietor thereof or his predecessor. *****

24. The question which, therefore, arises is as to who can prove that he had the bona fide intention to use the trade mark on the date of application for registration. Indisputably, it would be the registered proprietor. Section 46 is a penal provision. It provides for civil or evil consequences. It takes away the valuable right of a registered proprietor. It, therefore, can be taken away only when the conditions laid down therefor are satisfied. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 *****

26. It must not, however, be forgotten that Section 46(1)(b) provides for a special remedy. As a person obtains a right on and from the date of registration and/or renewal thereof, he cannot ordinarily be deprived of his right unless it is shown that the assignment thereof by its holder was not a bona fide one or had been made by way of camouflage. If the assignee has obtained assignment for bona fide use, he may not be fastened with any liability owing to non-user on the part of his predecessor. In other words, the mistake of the predecessor should not be visited with non-use of the present registered owner. *****

30. The submission of Mr Sudhir Chandra that the appellant was an infringer both of the right of M/s Jain Industries as also the first respondent and, thus, its use was not bona fide in a case of this nature cannot be accepted. If the appellant infringed the right of M/s Jain Industries, it was for it to take action therefor. It did not. The first respondent itself accepts that at least immediately prior to the institution of the suit, the appellant had been using the same. We are not concerned herein as to since when it had been doing so. It obtained an order of injunction. The order of injunction was vacated. For one reason or the other, the said order attained finality. Prima facie, therefore, the appellant has been held to be the registered owner of the trade mark. It is one thing to say that for the purpose of frustrating an application for rectification, the appellant had colluded with its predecessor for the purpose of trafficking by entering into the deed of assignment which is otherwise illegal and bad in law but it is another thing to say that the appellant could be proceeded against alone for non-user of the registered trade mark for a period of more than five years. For the purpose of making out such a case, both the original registrants as also the assignee were required to be impleaded as parties. ***** statute The court while construing a

32. consideration the parliamentary intent in amending the provisions thereof. It seeks to enhance the period of moratorium of use of the registered trade mark from one month to three months so as to prevent speculative assignment. Thus, a case of speculative assignment is specifically required to be made out. Such an application may be maintainable in terms of Section 56 of the Act but strictly not in terms of Section 46(1)(b) thereof and that too in the absence of the original registered proprietor. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

33. We are not satisfied with the explanation offered by the first respondent that it gave up the case of non-use of the registered trade mark against M/s Jain Industries on the basis of statement made by the learned counsel for the appellant; firstly, because consent does not confer jurisdiction; secondly, because want and/or lack of jurisdiction on the part of the Tribunal cannot be waived as if any order is passed without jurisdiction, the same would be a nullity; and thirdly, because the cause of action, even according to the first respondent in his application before the High Court, was different. The counsel appearing on behalf of the appellant did not 34. state that it had waived its right so far as non-impleadment of M/s Jain Industries was concerned. It only consented for grant of liberty in favour of the first respondent for filing of an application for the selfsame cause of action. The question of maintainability of the second suit in absence of the registrant proprietor was not and could not have been the subject-matter of consent at that stage. The cause of action which permitted the first respondent to file an application for rectification against M/s Jain Industries was non- user thereof by it. Its non-user and rectification of the register could not, in the aforementioned situation, have been tagged with the cause of action, if any, against the appellant.

35. The second contention of Mr Sudhir Chandra that the appellant was an infringer of the trade mark is again a question of fact. The right of the first respondent as a proprietor of the trade mark by reason of a long user is required to be determined vis-(cid:224)- vis M/s Jain Industries as also the appellant in the suit filed by it which is pending. The Board could not, while exercising its jurisdiction under Section 46(1)(b) of the Act, proceed on the basis of such presumption. It is not correct that no cause of action survived against 36. M/s Jain Industries. It was not lost by reason of assignment as was contended by the learned counsel. In the suit, only the competing right of the first respondent qua the appellant can be determined and not a right against M/s Jain Industries. Such a right cannot be determined in a proceeding under Section 46(1)(b) of the Act which is restricted to non-user of the registered trade mark. Both the appellant and Respondent 1 were the infringers of the right of M/s Jain Industries as it was the registered proprietor of the trade mark in respect of the goods in question, namely, centrifugal pumps. Two interpretations of the said provision Section 46(1)(b) 37. are possible. While interpreting the same, however, certain basic LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 principles of construction of statute must be kept in mind. As it takes away somebody’s right, it deserves strict construction. Jurisdiction of the Board being dependent on determination of the foundational facts, the same was required to be established on the basis of the averments made in the application and not otherwise. is not trade mark The right of a registered

38. automatically on the expiry of five years and one month. It does not provide for a “sunset” law. It has to be adjudicated upon. Whether the registered proprietor of the trade mark had taken recourse to trafficking or not must be determined in an appropriate proceeding. The principle of “purchaser of a property has a duty to make enquiries”, therefore, cannot apply in a case of this nature. So long as the right to assign a registered trade mark remains valid, once the same is validly assigned, the assignee derives the same right as that of the assignor in terms of the statute. A title to a trade mark derived on assignment as provided for under the Act cannot be equated with a defective title acquired in any other property as admittedly on the date of assignment, the right of the registered trade mark was not extinguished. *****

40. Our attention has again been drawn to a passage from Law of Trade Marks & Geographical Indications by Shri K.C. Kailasam, wherein the judgment of the Tribunal has been criticised in the following terms: “From the above legislative intent, it would seem that the period of non-use of the trade mark is to be reckoned continuously from the date of its registration. In American Home Products Corpn. v. Mac Laboratories (P) Ltd.14 rendered under the 1958 Act, it was held by the Supreme Court that ‘the person seeking to have the trade mark removed from the register has only to prove such continuous non-user’. It would appear that neither the UK Act, nor the Indian Act, at any time envisaged that the commencement of 5 year period of non-use is to be delinked from the date of registration of the mark, so as to give a fresh lease of life to the registration every time there is change in the ownership of the mark. If that be so, any registered proprietor could easily defeat an application for rectification by assigning the mark to some other person to have a fresh period of 5 14 (1986) 1 SCC 465 LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 years from the date of assignment and thus effectively frustrate the very object of the provision in Sections 47(1)(a) and (b). Further, it is to be noted that an assignment is subject to ‘the provisions of the Act and any rights vested in any other person’ — see Section 37. The assignor cannot obviously transfer more rights than he himself has to the assignee under the Act.” We do not think that the approach of the learned author is entirely correct. An assignor can transfer only such right which he possesses. If his title is not extinguished by reason of a provision of a statute for non-user of the trade mark for a period of five years, any assignment made shall be valid subject to such situation which we have noticed in para 30 supra.

41. For the views we have taken, we are of the opinion that the impugned judgment cannot be sustained. It is set aside accordingly. The Board shall, however, proceed to determine afresh the application filed by the first respondent in the light of the legal principles explained above.” (Emphasis supplied)

30. Thus, the proceedings before the Supreme Court were those that emanated from CO 6/1987. The IPAB dismissed the petition, the High Court reversed the decision of the IPAB and remanded the matter to the IPAB for a decision on merits, and the Supreme Court, while maintaining the direction to the IPAB to decide CO 6/1987 de novo, clarified that the decision was required to be taken in the light of the principles explained by the Supreme Court in its judgment.

31. It becomes necessary, therefore, to cull out the principles contained in the judgment of the Supreme Court, thus: (i) Section 46(1)(b) of the 1958 TMMA envisaged removal of a mark from the Register of Trade Marks provided the proprietor of the registered trade mark had not used the mark LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 for the time being, for a period of five years and one month prior to the filing of the rectification application. (ii) The Supreme Court was required to interpret the expression “for the time being”. (iii) The Court was, therefore, required to determine whether the period of five years’ non-use was to be of Thukral alone, or of Thukral or his predecessor Jain. (iv) Section 46, inasmuch as it took away the right of a registered proprietor to use his mark, had to be strictly construed. Strict satisfaction of the conditions of the Section was, therefore, necessary. (v) A person obtained the right to use a mark from the date of its registration in his name. Where the mark had been assigned to him by any earlier registrant, therefore, his right to use the mark could ordinarily be divested only if the assignment was not bona fide or was by way of camouflage. (vi) If the assignment to the assignee was bona fide, his registration could not be cancelled under Section 46(1)(b) because of non-use by his assignor. The mistake of the predecessor could not be visited on the successor. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 (vii) PMD’s contention that Thukral’s use of the FIELD MARSHAL mark was not bona fide as it infringed the rights of Jain as well as of PMD was rejected, for the following reasons: (a) If Thukral had infringed Jain’s registered trade mark, it was for Jain to sue Thukral, which it did not. (b) PMD had sued Thukral and obtained an ex parte ad interim order of injunction against Thukral using the FIELD MARSHAL mark on 19 December 1985 which was, however, vacated on 19 January 1988. (c) The order dated 19 January 1988 also held Thukral to be the registered owner of the FIELD MARSHAL mark. That order was never challenged. (d) PMD’s contention that it gave up its case of non- use of the FIELD MARSHAL mark against Jain because of the statement made by Thukral before the Court on 19 January 1988 was not found acceptable. Even the cause of action for instituting CO 6/1987, as pleaded therein, was stated to commence from 19 January 1988, consequent on Thukral asserting its registration of the mark. (viii) Any allegation that the assignment of the FIELD MARSHAL mark by Jain to Thukral was collusive or LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 speculative in nature could not be made without impleading Jain in the proceedings. (ix) Besides, a case of speculative assignment may have been a ground to seek cancellation of Thukral’s registration of the FIELD MARSHAL mark under Section 56, but not under Section 46(1)(b). (x) Without impleading Jain, PMD could not have pleaded non-user of the FIELD MARSHAL mark by Jain as a ground to remove the registration of the mark which was in favour of Thukral, in CO 6/1987. (xi) Any right of PMD, over the FIELDMARSHAL mark for centrifugal pumps, consequent on extended user by it, would have to be adjudicated, vis-(cid:224)-vis Jain and Thukral, in the 1985 suit. The IPAB could not proceed on any such presumption while deciding CO 6/1987. (xii) CO 6/1987 was under Section 46(1)(b) of the 1958 TMMA, which was restricted to non-user. The right of PMD qua Jain or Thukral could not be determined in these proceedings. (xiii) In respect of centrifugal pumps, Jain was the only registered proprietor prior to the Assignment Deed dated 30 May 1986 of the mark FIELD MARSHAL. As such, PMD and LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 Thukral were both infringers of the said registration, to the extent they used the mark for centrifugal pumps. (xiv) The IPAB was required to exercise jurisdiction, under Section 46(1)(b), on the basis of the averments in the rectification petition filed under the said section, and not otherwise. (xv) A valid assignment of a trade mark conferred, on the assignee, the same rights as vested in the assignor prior to assignment as, on the date of assignment, the assignor had a valid registration in the mark. Proceedings relating to CS (OS) 3804/199215 [later renumbered C. CS (Comm) 473/2016]

32. In the interregnum, in the year 1992, Thukral filed CS (OS) 3804/1992 against PMD and two other defendants, seeking an injunction against PMD using the mark FIELDMARSHAL, on the ground that it infringed the registration of the mark FIELD MARSHAL in favour of Thukral, consequent on the Assignment Deed dated 30 May 1986, as well the user of the mark FIELD MARSHAL by Thukral since 1973. In 2002, consequent on Sumita Rani becoming the sole proprietor of Thukral, the cause title of CS (OS) 3804/1992 was amended to read Sumita Rani v. Nitin Machine Tools Pvt Ltd & Ors. 15 “the 1992 suit” hereinafter LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

33. Consequent on the enactment of the Commercial Courts Act, 2015, CS (OS) 3804/1992 was renumbered CS (Comm) 473/2016. D. Proceedings relating to WP (C) 28/2021, WP (C) 29/2021, WP (C) 31/2021, WP (C) 32/2021, WP (C) 33/2021, WP (C) 34/2021, WP (C) 35/2021, WP (C) 36/2021, WP (C) 38/2021 and WP (C)

34. PMD filed 10 applications, under Section 23 of the 1958 TMMA, seeking registration of the word mark FIELDMARSHAL in Class 7 for diesel oil engines and parts thereof, centrifugal pumps, submersible pumps, electric motors, mono block and foot valves, claiming user since 1975. Thukral opposed the applications. The applications were rejected by the Assistant Registrar of Trade Marks on 12 August 1992. PMD appealed to the IPAB. The IPAB dismissed the appeals on 11 February 2005.

35. PMD, vide these 10 writ petitions, challenged the orders dated 11 February 2005 of the IPAB. IV. The Impugned Judgment – Findings of the learned Single Judge A. PMD is the prior user of the mark FIELDMARSHAL

36. The learned Single Judge first holds PMD to be the prior user of the mark FIELDMARSHAL, proceeding on the following reasoning: 16 All titled P.M. Diesels Pvt Ltd v. Thukral Mechanical Works & anr, and collectively referred to, hereinafter, as “the writ petitions” LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 (i) Original invoices, which were on record, indicated use of the mark FIELDMARSHAL by PMD since 1963. These evidenced substantial sales of products by PMD, under the mark FIELDMARSHAL, since the early 1960s. (ii) Invoices from J. Chandrakant & Co.17 documented use of the mark FIELDMARSHAL by PMD, for diesel engines and centrifugal pumps, in the 1970s. (iii) Brochures and advertisements in various newspapers evidenced use of the mark FIELDMARSHAL by PMD since the 1960s and 1970s. These also indicated the use of FIELDMARSHAL by PMD for centrifugal pumps since the 1970s. (iv) The Trade Mark registrations held by PMD stated the use of the mark FIELDMARSHAL by PMD to be since 1963. (v) Several banks, and other institutions, had approved the products of PMD. (vi) Though Jain’s registration for the word mark FIELD MARSHAL was of 13 May 1965, and claimed user of the mark by Jain since 1963, no document, evidencing such use, was forthcoming. 17 “JCC” hereinafter Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 LPA 320/2024 & other connected matters (vii) The earliest invoices produced by Thukral were of 1978, in which the word FIELD MARSHAL had been superimposed, with the printed invoice reflecting the mark BMS. (viii) The earliest advertisement or printed invoice produced by Thukral showing the use of the mark FIELD MARSHAL was of 1988. (ix) There was only one page, in Jain’s catalogue, showing a flour mill bearing the mark FIELD MARSHAL. (x) In the absence of any documentary evidence, it was incumbent on Thukral to produce collateral evidence of prior use of the FIELD MARSHAL mark by Jain. It failed to do so. (xi) There was absolutely no evidence to indicate that Jain was using the mark FIELD MARSHAL for centrifugal pumps. (xii) Further, (a) PW-1 Sushil Thukral claimed to have seen invoices from 1965 for centrifugal pumps, but provided no supportive basis, (b) the dealers DW-2 Faqueer Chand and DW-3 Padam Chand stated that they had been purchasing FIELD MARSHAL branded centrifugal pumps only since 1983, and were unable to produce any evidence of purchases or sales from 1970 to 1981, and LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 (c) invoices and advertisements were all of 1985 vintage.

37. Predicated on the above reasoning, therefore, the learned Single Judge holds that PMD was the prior user of the mark FIELDMARSHAL for diesel engines, centrifugal pumps, monoblock pumps, submersible pumps and other related products. B. Diesel engines and centrifugal pumps were allied and cognate

38. Thukral contended, before the learned Single Judge, that as PMD’s registration for FIELDMARSHAL was for diesel engines, and Thukral was using the mark for centrifugal pumps, there was no infringement, the goods being different.

39. The learned Single Judge has rejected the plea on the following reasoning: (i) The evidence on record, in the form of original invoices, advertisements and newspapers demonstrated that the mark FIELDMARSHAL was distinctive and adopted by PMD. (ii) The mark was initially used for diesel engines, with PMD expanding the use of the mark, later, to pumps, including monoblock and centrifugal pumps. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 (iii) PMD was having centrifugal pumps manufactured from third parties for sale across the country. (iv) Diesel engines and centrifugal pumps were both used in the agricultural sector. In the absence of electricity, centrifugal pumps needed electricity to run. (v) With respect to centrifugal pumps or diesel engines, the mark FIELDMARSHAL was arbitrary, and was neither generic nor descriptive. It was, therefore, entitled to a high level of protection. (vi) The use of the mark FIELDMARSHAL for diesel engines and other products in the agricultural sector would obviously result in likelihood of confusion. (vii) The fact that Thukral had filed CS (OS) 3804/1992 seeking injunction on the ground of infringement and passing off indicated that Thukral also acknowledged the likelihood of confusion which would arise consequent on simultaneous use of the FIELDMARSHAL mark. (viii) Witnesses had deposed to state that diesel engines and centrifugal pumps were available for sale in the same shops and counters. The class of consumers who purchased the two products was, therefore, the same. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

40. As such, holds the learned Single Judge, centrifugal pumps were allied and cognate to diesel engines.

41. The learned Single Judge proceeds, thereafter, to deal with the individual litigations as under. C. Re. the 1985 suit [P.M. Diesels Ltd v. Thukral Mechanical Works] C.1 Re. Issue 1 - Whether the suit was barred by acquiescence, laches and delay and Issue 6 - Whether PMD had misrepresented facts

42. These issues have been decided by the learned Single Judge in favour of PMD and against Thukral on the following reasoning: (i) PMD had specifically contended that it had encountered Thukral’s products in the market in 1985 and proceeded promptly to file the suit. The fact that PMD had encountered Thukral’s products in the market in 1985 was also borne out by the evidence of PW-2 Chandra Kant Popat Lal Patel. It was for this reason that, in 1987, PMD filed CO 6/1987 against Thukral. (ii) PW-3 also confirmed that Thukral was selling pumps under the marks BMS, DPF, etc, and produced bills to prove the point. PW-5 also confirmed that he had purchased centrifugal pumps from Thukral under the mark BMS. He produced a bill of Thukral, of 1979, which did not bear the mark FIELD MARSHAL. Similarly, PW-6, another dealer of PMD, also LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 produced the original bill of Thukral, dated 18 December 1979, which did not feature the FIELD MARSHAL mark. (iii) The preponderance of evidence supported PMD, and established that PMD had been selling diesel oil engines since 1963 and centrifugal pumps at least since 1975. (iv) Though Thukral sought to submit that one Karam Chand Aneja, who was PMD’s selling agent, was aware of the use, by Thukral, of the FIELD MARSHAL mark for centrifugal pumps, knowledge by Karam Chand Aneja, even if it were to be presumed, could not be attributed to PMD. This was also clear from the cross-examination of Mr. Karam Chand Aneja, who deposed as PW-3, to the effect that he was never an employee of PMD and had never worked as a servant of PMD. (v) Acquiescence, in order to operate as a defence against an injunction in a case of infringement had to be of such a level, as would constitute indirect encouragement, as held by the Division Bench of this Court in H.S. Sahni v. Mukul Singhal18. (vi) There could be no question of any delay, laches or acquiescence operating against PMD, as PMD had, since inception, taken steps to oppose the use and registration of the mark FIELD MARSHAL by Thukral, including issuance of legal notice dated 22 June 1982, filing oppositions against 18 (2023) 298 DLT 390 LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 Thukral’s applications, filing the 1985 suit and filing of rectification petitions. (vii) There was nothing to indicate that PMD had knowledge of Thukral’s use, prior to 1985, of the mark FIELD MARSHAL. (viii) Thukral has itself applied for registration of the mark FIELD MARSHAL on 10 December 1983. During opposition proceedings in connection with the said application, Thukral filed the evidence of Anil Kumar Thukral, relying on the number of invoices, copies of which were also filed before the learned Single Judge. On PMD pointing out that the original invoices did not bear the mark FIELD MARSHAL, Thukral withdrew the documents vide letters dated 20 March 1983 and 30 March 1987. This fact was admitted by DW-1 in cross- examination. This also indicated that Thukral was unable to establish use of the mark. (ix) Thus, it was Thukral which had resorted misrepresentation by tampering with invoices in order to obtain registration of the FIELD MARSHAL mark in its favour.

43. The learned Single Judge, therefore, decided Issues 1 and 6 in favour of PMD and against Thukral. C.2 Issues 2 and 4 LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46

44. Issue 2, which pertained to territorial jurisdiction, was not seriously contested by the parties, either before the learned Single Judge or before us.

45. Issue 4 was as to whether Thukral had infringed the registered copyright of PMD. The learned Single Judge held that the device used by Thukral was not similar to the copyrighted artistic work of PMD and that, therefore, there was no copyright infringement. This finding has also not been contested before us. Issue No. 3 - Whether Thukral’s goods, under the trademark C.3 FIELD MARSHAL, were being passed off as PMD’s goods? AND Issue 7 – Whether PMD was the proprietor of the trademark FIELDMARSHAL and had the right of exclusive use thereof in respect of centrifugal pumps or other goods in the same class or description?

46. The learned Single Judge has decided both these issues in favour of PMD and against Thukral and has, consequently, decreed the suit in the said terms, on the following reasoning: (i) PMD had succeeded in establishing adoption, by it, of the mark FIELDMARSHAL since 1963. It was using the mark for diesel oil engines and other goods. It had substantial sales and turnover and a long list of dealers. These facts had also been confirmed by the dealers who appeared as witnesses. LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 (ii) Thukral had not produced any document to prove use of the mark FIELDMARSHAL by Jain on centrifugal pumps. (iii) Thukral sought to contend that PMD had to show goodwill on the date of adoption of the mark FIELDMARSHAL by Jain, and use after such an adoption was of no consequence. (iv) Registration did not confer goodwill. Use did. In the absence of any evidence to show use of the mark FIELDMARSHAL by Jain since 1965, PMD’s user had to be given preference and precedence. PMD had undoubtedly used the mark FIELDMARSHAL for diesel oil engines and, thereafter, adopted the mark for centrifugal pumps, monoblock pumps and related goods. (v) In circumstances, the mark FIELDMARSHAL by Thukral undoubtedly constituted passing off, as the marks were identical, the goods were cognate and allied, the class of consumers targeted were identical and the trade channels were identical, thereby satisfying the triple identity test. (vi) Thukral’s contention that it was not required to show user of the FIELDMARSHAL by Jain after 1965, when it was registered in favour of Jain for centrifugal pumps, was contrary LPA 320/2024 & other connected matters Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:07.02.2026 11:48:46 to the established principle that registration alone did not confer rights without corroborative use. (vii) Thukral’s adoption of the mark FIELDMARSHAL, in the same field as PMD, was dishonest. Its attempt to legitimise the user by obtaining an assignment from Jain, could not help it, as Jain had also not used the mark for centrifugal pumps. The use, by Jain, of the FIELDMARSHAL mark was also for flour mills. (viii) The judgments of the Supreme Court in N.R. Dongre v. Whirlpool Industries19, S. Syed Mohideen v. Sulochana Bai20 and Neon Laboratories made it clear that even a registered proprietor of a mark could be sued for passing off. (ix) PMD was the first adopter and user of the mark FIELDMARSHAL. The subsequent adoption of the same mark by Thukral, whether through Jain or otherwise, resulted in passing off, as the goods were similar. (x) The subsequent registration of the mark in favour of Jain for centrifugal pumps did not constitute a valid defence to a passing off action.

47. Following the above reasoning, the learned Single Judge decreed the suit in terms of prayers 16(i) and 16(ii) thereof, which read thus: