Deciding a case that took roots in 1985, the Delhi High Court recently held that the trademark, “FIELDMARSHAL”, for diesel oil engines, centrifugal pumps, and other cognate goods belongs to PM Diesel. The Court rejected the trademark ownership plea of Thukral Mechanical Works based on acquisition of the trademark in Class 7 from Jain Industries. It came to this conclusion because PM Diesel had proved that it was a prior user, and because Thukral’s user rights were inferior to those of PM Diesel.
Prior User Rights
PM Diesel claimed its trademark rights in the case based on the use of ‘FIELDMARSHAL’ from 1963 for diesel oil engines, and for centrifugal, monoblock, and other pumps since 1975. PM Diesel had also registered several trademarks relating to ‘FIELDMARSHAL’, the first one dated in 1964. On the other hand, Thukral claimed trademark rights based on the acquisition of the trademark from Jain Industries, which had its filing date in 1965. Though Thukral claimed rights based on the use by its predecessor in title, it could prove use only relating to flour mills, and not with respect to pumps. The first date of use Thukral was able to prove was from 1985. Based on oral and documentary evidence on record, the Court came to the conclusion that PM Diesel was the prior, continuous, and legitimate user of ‘FIELDMARSHAL’, and therefore, its owner. As PM Diesel was the prior user, the Court found it fit to cancel Thukral’s registered trademark relating to ‘FIELDMARSHAL’.
Acquiescence
As a part of its pleadings, Thukral argued acquiescence, delay, and laches on behalf of PM Diesel, which the Court rejected. While rejecting the plea of acquiescence, the Court reiterated the fact that this defense would be valid only if there had been a tacit or active encouragement to the use of the trademark by the defendant, and not if there was only inaction. In the facts of the case, the Court pointed out that PM Diesel did not stay quiet, but took steps to stop the use of the mark by Thukral through legal notices, oppositions, rectifications, and also, suits, which ruled out the possibility of acquiescence on its behalf.
Passing Off
Coming to PM Diesel’s plea of passing off, the Court reiterated that an action for passing off would not be barred because the defendant has a trademark registration. The plea of registration would be valid only with respect to the plea of infringement, and not passing off. As PM Diesel had acquired significant goodwill based on prior, continuous, and consistent use, the Court stated that the use of ‘FIELDMARSHAL’ by Thukral for pumps and related products in agriculture would amount to misrepresentation and passing off. It rejected the plea of goodwill by Thukral because it could not prove continuous use, and because acquiring the trademark registration from Jain Industries was an afterthought following the filing of the suit.
Actual Costs
As the case had taken close to 40 years because of a multiplicity of proceedings, which had put the legitimate trademark owner through significant expense, and trouble, the Court found it fit to grant actual costs of the litigation to PM Diesel. With respect to the pending oppositions, the Court ordered the Registrar of Trademarks to register PM Diesel’s pending trademark applications over ‘FIELDMARSHAL’. While the Court granted several reliefs to PM Diesel, it did not agree with the plaintiff that Thukral was liable for copyright infringement because the artwork that formed part of the logos of the parties was different. The Court also refused to grant any relief in the form of rendition of accounts as the interim injunction was earlier vacated.
Citation: Pm Diesel P. Ltd. vs Thukral Mechanical Works, Delhi High Court, 02nd April, 2024 C.O. (COMM.IPD-TM) 667/2022
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