P.M. Diesels Private Limited vs. Thukral Mechanical Works:An interim injunction cannot be granted against a registered trade mark owner unless the registration is declared invalid
Case Title: P.M. Diesels Private Limited vs. Thukral Mechanical Works
Date of Order: 19 January 1988
Neutral Citation: AIR 1988 DELHI 282, 1988(1) ARBLR 150 (DELHI), 34 (1988) DLT 235, 1988 (15) DRJ 47
Court: Delhi High Court
Judge: Hon'ble Justice Shri Justice B.N. Kirpal
Introduction:The case of P.M. Diesels Private Limited vs. Thukral Mechanical Works revolved around trademark infringement and the concept of passing off under the Trade and Merchandise Marks Act, 1958. The dispute arose regarding the use of the trade mark "Field Marshal," which both parties claimed rights over in relation to diesel oil engines and centrifugal pumps. The plaintiff sought an injunction to prevent the defendant from using the trade mark, while the defendant argued that it was the registered proprietor of the mark for centrifugal pumps. This case is significant in defining the rights of registered trade mark owners and prior users.
Factual Background:P.M. Diesels Private Limited had been engaged in the business of manufacturing, marketing, and exporting diesel oil engines, centrifugal pumps, and electric motors since 1963. It had obtained registration of the trade mark "Field Marshal" under the Trade and Merchandise Marks Act, 1958. Thukral Mechanical Works was also manufacturing centrifugal pumps and had adopted the trade mark "Field Marshal" for its products. The plaintiff alleged that the defendant was infringing its registered trade mark and engaging in passing off, which misled customers into believing that the defendant’s products were associated with the plaintiff. The plaintiff obtained an ex parte injunction on 19 December 1985, restraining the defendant from manufacturing or selling goods under the trade mark "Field Marshal." However, the defendant contested this order, arguing that it was the registered proprietor of the trade mark for centrifugal pumps, having acquired it through an assignment from Jain Industries, Agra, in 1986.
Procedural Background:The plaintiff initially filed a suit for a perpetual injunction, preventing the defendant from using the mark "Field Marshal" for diesel oil engines and related products. The Delhi High Court granted an ex parte injunction on 19 December 1985. The defendant challenged the injunction, asserting its trade mark registration for centrifugal pumps. The plaintiff subsequently filed C.O. 6/87 for rectification of the trade mark register, seeking removal of the defendant’s registration. The court considered whether the plaintiff, despite being a prior user, could restrain the defendant from using a trade mark registered in its favor.
Issues Involved:Whether the plaintiff could restrain the defendant from using the trade mark "Field Marshal" despite the defendant’s registration? Whether the defendant’s registration of the trade mark for centrifugal pumps was valid? Whether the plaintiff’s prior use of the trade mark gave it a superior right over the registered proprietor? Whether the defendant had engaged in fraudulent activities to secure the trade mark registration? Whether the principles of "passing off" were applicable in this case?
Submission of Parties:The plaintiff argued that it had been using the trade mark "Field Marshal" since 1963 and had goodwill and reputation in the market. The defendant’s use of the trade mark constituted infringement and passing off, causing confusion among consumers. The defendant had fraudulently acquired registration for centrifugal pumps and manipulated trade mark records. The plaintiff’s application for rectification should be given precedence, and an interim injunction should be maintained until a final decision on rectification.
The defendant countered that it was the registered proprietor of the trade mark for centrifugal pumps, which was assigned to it by Jain Industries, Agra. Under Section 28 of the Trade and Merchandise Marks Act, 1958, a registered proprietor had an exclusive right to use the trade mark. The plaintiff never challenged the registration when it was first granted in 1965 to Jain Industries. The plaintiff could not seek an injunction because the registration of the trade mark was prima facie valid under Section 31 of the Act.
Discussion on Judgments Cited:The plaintiff relied on Narayanan’s Trade Marks and Passing Off, which states that prior user rights override registration rights, citing Section 33 of the Trade and Merchandise Marks Act, 1958. The defendant relied on M/s. Mayor Brothers v. M/s. Watkins Mayor & Co., IA 2061/78 in Suit No. 530/78, decided on 13 April 1983, where the Delhi High Court refused to grant an injunction against a registered proprietor of a trade mark. The defendant also cited Marfleet Refining Co. v. Warden Chemicals, IA 2969/82 in Suit No. 1024/82, where the court held that an injunction cannot be granted against a registered proprietor unless the trade mark is removed from the register. The plaintiff referred to Valentine Extract Co. Ltd., (1901) 18 RPC 175, arguing that an injunction can be granted if a trade mark was fraudulently obtained. However, the court found this case inapplicable as it did not involve Sections 28 and 31 of the Indian Act.
Reasoning and Analysis of the Judge:Justice B.N. Kirpal analyzed the case based on the principles of trade mark registration, prior user rights, and passing off. Registration of the Trade Mark: Under Section 28, a registered proprietor has the exclusive right to use the trade mark. The defendant was the registered owner of the trade mark "Field Marshal" for centrifugal pumps. Prior User Rights: The plaintiff claimed prior user rights under Section 33, but this did not give the plaintiff the right to restrain a registered proprietor. Prima Facie Validity: Under Section 31, the defendant’s registration was prima facie valid, and the plaintiff had to prove fraud in rectification proceedings. Co-existence of Rights: Since both parties were registered proprietors for different goods, Section 28(3) applied, preventing one from restraining the other. Allegations of Fraud: The court held that allegations of fraudulent registration could only be decided in the rectification proceedings.
Final Decision:The court vacated the interim injunction and allowed the defendant to use the trade mark "Field Marshal" for centrifugal pumps. The defendant was required to not use the logo/style owned by the plaintiff, mention "Thukral Mechanical Works, Sirhind" on its products, and maintain accounts of sales under the trade mark.The plaintiff was allowed to pursue rectification proceedings, but until the trade mark was removed, the defendant retained its registered trade mark rights.
Law Settled in This Case:A registered proprietor has exclusive rights under Section 28 unless the trade mark is removed. Prior user rights do not automatically override trade mark registration. An interim injunction cannot be granted against a registered trade mark owner unless the registration is declared invalid. Allegations of fraud must be decided in rectification proceedings, not in an injunction application. Co-existence of trade mark rights under Section 28(3) applies if both parties have separate registrations.
Disclaimer:This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney, Delhi High Court
