P.M. Diesel Pvt. Ltd. vs Thukral Mechanical Works And Anr.

S. Jagadeesan, J

The applicant filed this rectification application under Sections 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred

to as the Act) for the rectification of the entry relating to the registered trade mark No. 228867 in class 7 stands in the name of the first respondent.

The case of the applicant is that the applicant company is one incorporated under the Companies Act, 1956 since 1963 and the applicant company

and/or its predecessors in title have been carrying on business of manufacturing, marketing and exporting of diesel oil engines, (not for land vehicles)

and parts thereof, centrifugal pumps, agricultural pumps, electric motors, pumping sets and parts thereof etc. They and their predecessor in title have

been using the trade 'FIELD MARSHAL' for their aforesaid goods. The trade mark 'FIELD MARSHAL' is duly registered under the provisions of

the Trade and Merchandise Marks Act, 1958 in the name of the petitioner as follows:-

The registrations were made in the year 1964 in respect of number 224879 and in the year 1965 in respect of other registration Nos. 252070 and

252071. The registration of the trade mark 'FIELD MARSHAL' has been periodically renewed from time to time and the same is valid and effective.

The applicant as well as their predecessor in title incurred huge expenses by way of advertisements to popularise the impugned trade mark 'FIELD

MARSHAL' and by the long and continuous use of the said trade mark, the same has acquired unique reputation and goodwill in the public. The said

trade mark 'FIELD MARSHAL' is always identified with the applicant and their goods.

The impugned trade mark 228867 was registered in the name of Puran Chand Jain and Kailash Chand Jain trading as M/s Jain Industries. The said

trade mark was registered in class 7 in respect of flour mills, circulation and centrifugal pumps, couplings for machines, pulleys included in class 7 and

valves being parts of machines. The impugned trade mark 'FIELD MARSHAL' was never used by the proprietors in respect of centrifugal pumps

and the registered proprietors used the mark only for flour mills. The first respondent herein M/s Thukral Mechanical Works infringed the registered

trade mark of the applicant by using the same in respect of centrifugal pumps or agricultural pumps. On coming to know about the infringement by the

respondent and misuse of the same, the applicant filed Suit No. 2408 of 1985 on the file of the High Court of Delhi against the first respondent herein.

In the said suit the first respondent herein contended that they used the trade mark 'FIELD MARSHAL' since the year 1973. The first respondent

also claimed the use of the trade mark 'FIELD MARSHAL' since the year 1973 before the Registrar of Trade Marks, New Delhi in the proceedings

in opposition No. DEL-4109 filed by the first respondent. The applicant filed criminal miscellaneous petition No. 934 of 1986 before the High Court of

Delhi to initiate criminal prosecution against the first respondent for fabricating the documents. Having contested the suit, which is still pending, the

first respondent got the assignment of the impugned registered trade mark No. 228867 from M/s Jain Industries. The said assignment in favour of the

first respondent is a mala fide one and with the dishonest intention of defeating the ends of law and to continue the trade upon the goodwill and

reputation of the applicant.

The applicant filed C.O. No. 9 of 1989 for rectification of the impugned trade mark No. 228867 against M/s Jain Industries, the original registered

proprietors. The said petition was withdrawn by the applicant with the permission of the High Court of Delhi to file the present rectification petition

against the first respondent, since it was represented that the first respondent became the registered proprietor of the impugned trade mark by way of

assignment. The said representation was made in January 1987. The grounds on which the present rectification petition filed are;

(i) The registration of the impugned trade mark under No. 228867 was made without sufficient cause and it is wrongly remaining on the Register of

Trade Marks and the assignment of the impugned trade mark in favour of the first respondent also amounts to fraud and is not sustainable under law.

(ii) The existence of the impugned trade mark on the Register of Trade Marks is an obstacle in the use and registration of the trade mark 'FIELD

MARSHAL' of the applicants.

(iii) The impugned registered trade mark is being misused by the first respondent who are infringes and offenders.

(iv) The registered proprietors M/s Jain Industries never used the impugned trade mark till the date of filing of the petition either before grant of

impugned registration or after in respect of circular or centrifugal pumps.

(v) The impugned trade mark was obtained without any bona fide intention on their part to use the same in relation to circulation/centrifugal pumps or

parts thereof and there is no bonafide use of the impugned trade mark in relation to the said goods by the then registered proprietors for the time being

up to a period of five years and one month before the date of the present petition within the meaning of Section 46(1) of the said Act.

(vi) The entry relating to the impugned trade mark was wrongly made on the register on the date of registration there of, the said persons were not the

proprietors of the impugned trade mark within the meaning of Section 18(1) of the Act. (vii) The assignment of the impugned trade mark and recordal

there of by the second respondent in the name of the first respondent is illegal, invalid and contrary to the provisions of the Act.

(viii) The assignor was not the proprietor of the impugned trade mark at the time of its assignment in favour of the first respondent and as such the

instrument through the assignment was made is illegal and void in the eye of law.

(ix) For the reasons stated above the applicant seeks rectification of the Register of Trade Marks by deletion or expunge of the impugned trade mark

so far as it relates to the circulation or centrifugal pumps are concerned.

The first respondent filed the reply wherein they refuted all the averments of the applicant made in their application. Further the first respondent

asserted that in the applicant's trade mark application 389729 dated 10.05.82 which was advertised in the Trade Mark Journal No. 902 dated 1.1.87,

the applicant has admitted that they are not using the trade mark 'FIELD MARSHAL' in respect of centrifugal pumps. On the contrary they made a

false' claim for having used the trade mark FIELD MARSHAL' in respect of centrifugal pumps since 1963. First respondent further asserted that

they were using the trade mark 'FIELD MARSHAL' continuously and widely since 1973. They further contended that there is no mala fide intention

or any fraud in the assigned of the impugned trade mark in favour of the first respondent. The original registered proprietors of the impugned trade

mark were using the said trade mark well within the knowledge of the applicant and as such the plea of non-user is without any basis and

consequently prayed for dismissal of the application.

Before the High Court of Delhi the documents were filed and oral evidence was let in by both the parties. On behalf of the applicant four witnesses

were examined. It may be pertinent to note that the applicant wanted to examine Mr. Kailash Chand Jain, one of the partners of M/s Jain Industries,

the assignor of the first respondent and subsequently on 6.2.96 made a representation that they did not want to examine him. On behalf of the first

respondent three witnesses were examined. C.O. No. 6/87 was transferred to this Board pursuant to Section 100 of the Trade Marks Act, 1999.

The learned counsel for the applicant contended that C.O. No. 9/86 was filed against M/s Jain Industries, the registered proprietor of the impugned

trade mark 'FIELD MARSHAL' on the ground that the registered owners did not use the trade mark for a period of five years and one month prior to

the date of filing of the petition, as contemplated under Section 46(1) and consequently the remaining of the said trade mark in the trade mark register

is wrong or invalid. When the said C.O. 9/86 was pending the impugned trade mark was assigned in favour of the first respondent on 30.5.86. The

assignment in favour of the first respondent was brought to the notice of the Court and also to the applicant in January 1987 and immediately the

applicant withdrew the rectification petition C.O. 9/86 filed against M/s Jain Industries with liberty to file fresh rectification petition against the first

respondent on the same cause of action. This rectification petition was filed mainly on the ground that the original registered proprietors M/s Jain

Industries as well as the first respondent never used the impugned trade mark for a period of five years and one month and consequently the same is

liable to be removed from the Register of Trade Marks. He also contended that the assignment in favour of the first respondent is invalid since on the

date of assignment the assignors were not the owners of M/s Jain Industries. There is absolutely no evidence on behalf of the first respondent for the

use of the impugned trade mark from the date of assignment till the date of filing of this rectification petition. Hence, it is a clear case of non-user for

the statutory period as contemplated under Section 46(1) of the Act and as such the petition is to be allowed.

The learned counsel for the first respondent contended that the applicant filed the Suit No. 2408/85 on the file of High Court of Delhi and obtained

ex parte injunction on 19.12.85. The said ex parte injunction was vacated on 19.1.88. The first respondent got the assignment of the impugned trade

mark on 30.5.86. C.O. No. 9/86 filed against M/s Jain Industries was withdrawn on 16.1.87 by the applicant. The present rectification petition was

filed on 19.1.87. In the present rectification petition in para 8 the applicant made an averment that the first respondent imitated and infringed the

registered trade mark 'FIELD MARSHAL' of the applicant and started using the same in respect of centrifugal pumps and agricultural pumps and this

statement of the applicant makes it clear that the first respondent was using the trade mark 'FIELD MARSHAL'. Hence, the plea of non-user will not

arise in view of the admission of the applicant about the use of 'FIELD MARSHAL' Trade Mark by the respondent. Similarly in the legal notice

issued by the first respondent in the year 1982 there is a specific mention about the use of the trade mark 'FIELD MARSHAL' by the first

respondent. Apart from this the first respondent had stated in the oral evidence about the use of the trade mark 'FIELD MARSHAL' and the said

statement in the chief examination was not challenged in his cross-examination and as such use of the trade mark 'FIELD MARSHAL' by the first

respondent has to be taken as established by the admissions of the applicant as well as by the oral evidence of the first respondent. In such

circumstances there is no need for the first respondent to let any independent evidence to establish their case of user. Further, during the period in

which the order of injunction passed by the Court was in force, the respondent was restrained from using the said trade mark and hence that period

has to be deducted as per Section 46(3) of the Act while calculating the statutory period prescribed under Section 46(1) of the Act as the first

respondent had been prevented from using the said trade mark by the order of the Court. If that period is excluded then the statutory period of five

years and one month is not satisfied and as such the petition is liable to be dismissed. We considered the above contentions of the respective counsel.

The applicant firm adopted the trade mark 'FIELD MARSHAL' in respect of diesel oil engines and parts thereof in the year 1963. The applicant

firm was established in the year 1963. Originally Patel Manufacturers were the users of the trade mark. The firm Patel Manufacturers was taken

over by the applicant in the year 1981. The trade mark 'FIELD MARSHAL' was registered under 224879 claiming user since 1963. The trade mark

stylish 'FIELD MARSHAL' registered under 252070 and the trade mark logo 'FIELD MARSHAL' registered under 252071. The first respondent

since copied the trade mark of the applicant and infringed the same, the applicant filed the suit against the first respondent for passing-off in Suit No.

2408/85 and obtained an order of injunction on 19.12.85.

The applicant came to know that one M/s Jain Industries, Agra had obtained registration of the same trade mark 'FIELD MARSHAL' in class 7.

The applicant filed rectification petition C.O. 9/86 on 31.5.86 for the removal of the said Trade Mark 228867, the impugned one in the present

proceedings. On 30.5.86 first respondent got the assignment of the impugned trade mark and filed the request in TM-24 on 17.6.86 before the

Registrar of Trade Marks, Mumbai for transfer of the said trade mark in their name during the period when the injunction order in favour of the first

respondent was in force. On 24.10.86 the Registrar of Trade Marks passed an order and allowed the assignment in favour of the first respondent and

entered the same in the name of the first respondent. On 16.1.87 M/s Jain Industries, respondents in C.O. No. 9/86 brought to the notice of the High

Court of Delhi about the fact of assignment and on the same day the High Court permitted the applicant to withdraw the said C.O. No. 9/86 with

liberty to file fresh C.O. against the first respondent herein on the same cause of action. On 19.1.87 the present rectification application was filed

against the first respondent.

It may be appropriate to make a mention here that the first respondent filed the application No. 363764 for registration of the trade mark 'FIELD

MARSHAL' in class 7 in the year 1978. The same was advertised in the Trade Marks Journal on 16.11.84. The first respondent withdrew the said

application on 20.3.87 i.e., subsequent to the assignment of the impugned Trade Mark 228867 in their favour.

Though several contentions were raised by both the counsel, we are of the view that there is absolutely no necessity to discuss any of them as

they are unnecessary. The only relevant question to be considered in this rectification petition is whether the impugned trade mark 228867 'FIELD

MARSHAL' is liable to he removed from the Register of Trade Marks due to non-use for a period of five years and one month prior to the filing of

this petition. This is the main ground on which the present rectification petition was filed. The averments made by the applicant in the petition is that

the impugned trade mark though registered in the name of M/s Jain Industries long back still they have not used the trade mark for the purpose of

manufacturing centrifugal pumps. Though the first respondent got assignment of the said impugned trade mark in their favour as early as 30.5.86 they

also did not use the said trade mark for manufacture of the centrifugal pumps till the filing of the petition, and as such the said impugned trade mark is

liable to be removed from the Register of Trade Marks or in alternate the registration be rectified with the expression 'circulation or centrifugal pumps'

are deleted or expunged from the specification of goods in respect of which the impugned trade mark is registered.

In order to consider this question we have to first see the provision under Section 46(1). Section 46(1) of the Act is as follows:-

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 he taken off the register in respect of any of the goods in respect of which it is

registered on application made in the prescribe manner to a High Court or to the Registrar by any person aggrieved on the ground either-

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to

those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact been no bona fide

use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of application; or

(b) that upto 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.

The above provision empowers the High Court or the Registrar to remove from the Register of Trade Marks or impose any limitation on the ground of

non-use. Sub-clause (b) of Sub-section (1) prescribes a period of five years and one month or longer for the non-use of the said trade mark to suffer

the removal. Hence, what we have to consider is whether the applicant had established the non-use of the impugned trade mark by the first

respondent within the period of five years and one month prior to the filing of the present rectification petition.

The learned counsel for the respondent contended that the averments in para 8 in the rectification petition that the first respondent had been using

the trade mark 'FIELD MARSHAL' in respect of centrifugal pumps must be construed that the applicant has admitted use of the impugned registered

trade mark by the 1st respondent. The learned counsel for the first respondent also relied upon a legal notice dated 22.6.82 issued by the applicant for

the use of the impugned trade mark. In the notice the applicant has called upon the first respondent to stop the use of the infringed trade mark 'FIELD

MARSHAL'. Hence, the request of the applicant to stop the use of trade mark makes clear about the use of the trade mark 'FIELD MARSHAL' by

the first respondent.

So far as the use of the trade mark 'FIELD MARSHAL' by the first respondent is concerned, there is slight intrinsic difference which has to be

clearly made out, as the first respondent was using the trade mark 'FIELD MARSHALL' in respect of their goods as infringe which in quite different

from the use of the registered mark 'FIELD MARSHALL' in No. 228867 as assigned proprietor. Both are distinct and cannot he clubbed together.

The registered Trade Mark 'FIELD MARSHAL' in No. 228867 is totally a different one from the unregistered Trade Mark 'FIELD MARSHAL'

used by the first respondent by way of infringing the applicant's registered Trade Mark.

There is no doubt that the first respondent had been using the trade mark 'FIELD MARSHAL' by infringing the registered trade mark of the

applicant. It is an admitted fact that the first respondent filed applicant No. 363764 for registration of the same trade mark in their name and ultimately

the said application was withdrawn on 20.3.87. In the meanwhile on 30.5.86 the first respondent got the assignment of the impugned registered Trade

Mark No. 228867 'FIELD MARSHAL' from M/s Jain Industries. M/s Jain Industries were registered proprietor of the said trade mark and they were

using the trade mark for flour mills. The case of the applicant is that M/s Jain Industries got the registration of the impugned trade mark in respect of

centrifugal pumps, and they never used the same till they assigned it in favour of the first respondent. C.O. No. 9/86 was filed by the applicant for

rectification of the Registered Mark No. 228867 only on that ground. Since during the pendency of the said rectification petition the assignment was

made in favour of the first respondent, the said rectification petition was withdrawn and the present petition was filed against the respondent. Here

again the averment is to the effect that M/s Jain Industries never used the said impugned registered trade mark in respect of centrifugal pumps till they

assigned the same in favour of the 1st respondent and the respondents also never used the impugned registered mark in respect of centrifugal pumps

after assignment.

Sub-clause (b) of Sub-section (i) of Section 46 prescribes a period of five years and one month or longer for the non-use of a trade mark in

relation to those goods by any proprietor thereof for the time being, for the removal of the said trade mark. To be precise, in terms of the provisions it

runs as follows:-

That upto 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.

The object underlined in Section 46 is to prevent trafficking in trade marks. This is, in fact, the object underlying in all trade mark laws. A trade mark

is meant to distinguish the goods of one person from those made by another. A trade mark, therefore, cannot exist in vacuum. It can only exist in

connection with the goods in relation to which it is used or intended to be used. Its object is to indicate the connection in the course of trade between

the goods and some person having right to use the mark either with or without any indication of the identity of that person. When a person gets his

trade mark registered, he acquires valuable right by reason of such registration. The registration of his trade mark gives him exclusive right to the use

of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by another person using the

mark which is the same or deceptively similar to his mark, he can protect his trade mark by an action for infringement in which he can obtain by way

of damages or account of profits. So Sub-clause (b) contemplates bona fide non-use of the trade mark for the stipulated period in relation to those

goods by any proprietor thereof for the time being. The phrase ""any proprietor thereof for the lime being"" has a relevance with the non-user.

The term ""for the time being"" means that the moment or existing position as explained by the Supreme Court in the case of Jivendranath Kaul v.

Collector/District Magistrate,: (1992) 3 SCC 576. In yet another case H.S. Maharajadhiraja Madhava Rao Jivaji Rao Scindia Bahadur and Ors. v.

Union of India, AIR 1971 SC 530 at page 568 para 110 familiarly known as the Privy Purses case the Supreme Court had an occasion to consider the

term ""for the time being"" in Clause 22 of Article 322 of the Constitution of India. The Supreme Court had interpreted the term as one at a given time.

Hence, the phrase ""for the time being"" refer only to the proprietor of the trade mark at the time of filing the rectification petition. If we take the

relevant dates in this case, the first respondent got the assignment of the disputed trade mark on 30.5.86. They also filed TM-24 to get themselves

registered as subsequent proprietors on 17.6.86 and the first respondent was registered as the subsequent proprietor. When the Act prescribes a

stipulated period of five years and one month to establish the fact that there was no bona fide use by the proprietor of the trade mark sought to be

removed, it would naturally refer to the non-use of the impugned trade mark by the first respondent for the stipulated period.

The petition has been filed for rectification by the applicant on 19.1.87, that is, hardly within 7 1/2 months from the date of assignment of the trade

mark in favour of the first respondent. The first respondent having become the proprietor of the disputed trade mark on 30.5.86, the disputed mark

cannot be removed from the Register on the ground that there is no bona fide use of the same by the first respondent for a period of five years and

one month prior to 19.1.87, that is, the date on which the present application was filed.

The contention of the learned counsel for the applicant is that the applicant filed C.O. 9/86 for rectification of the disputed trade mark against Jain

Industries, the then proprietors of the disputed trade mark on the same ground of non-user for five years and one month. During the pendency of the

said C.O. 9/86, the first respondent got the assignment of the said trade mark and consequently the applicant withdrew C.O. 9/86 with liberty to file a

fresh petition for rectification on the same cause of action. In view of the permission granted by the Court, the present proceedings must be taken as

continuation of the earlier proceedings C.O 9/86 and as such the stipulated period of five years and one month is satisfied. We are unable to agree

with the said contention of the learned counsel for the applicant for the simple reason that the cause of action in respect of C.O. 9/86 is non-user by

the then proprietor of the trade mark Jain Industries. Unless the cause of action and the relief claimed in this application are the same as in C.O. 9/86,

it cannot be said that the subject matter of this application is the same as in the first. The cause of action in C.O. 9/86 is non-use of the impugned

mark by Jain Industries who were parties therein. In the present application the cause of action is non-use of the impugned mark by the first

respondent. When the parties are different and the cause of action is also different, the present application cannot be considered to be a one in

continuation of the earlier C.O. 9/86 on the same cause of action. Because of the phrase ""any proprietor thereof for the time being"" occurring in Sub-

clause (b) of Section 46(1) of the Act, the cause of action totally differs. There cannot be any continuation of the cause of action especially when the

proprietors have changed in respect of the said trade mark. In the absence of any provision in the Act to tag on the period of non-use by the previous

proprietor with that of the period of non-use by the present proprietor of the trade mark, the tagging cannot be done. The stipulated period would refer

to each proprietor and consequently we have to hold that the applicant has not established the fact that the first respondent has not used the disputed

trade mark for a period of five years and one month especially when they are the proprietors for hardly 7 months on the date of filing of the

application.

In para 10 of the petition the applicant has stated that the registration of the impugned mark under No. 228867 was made without sufficient cause

and it is wrongly remaining on the Register of Trade Marks. In the grounds of petition in ground (f) the applicant has stated that Jain Industries neither

manufactured nor supplied the pumps under the impugned trade mark ""FIELD MARSHAL'. As already stated once the assignment has been made

and the first respondent having become to subsequent proprietor, the non-use of the impugned mark for the prescribed period must be against the first

respondent. With regard to assignment also the petitioner has not challenged the same except vaguely stating that the assignment is a fraudulent one,

illegal and contrary to the provisions of the Trade and Merchandise Marks Act, 1958. No details were furnished in respect of the above allegations

and hence we have to hold that these allegations have not been established.

Consequently the petition fails and it is dismissed. However, there will be no order as to costs.