In view of this situation learned companynsel for the petitioner has submitted that he may be permitted to withdraw this petition with permission to file a fresh petition on this very cause of action after impleading M s Thakural mechanical Works etc.
Opining that an application for rectification against the appellant within a period of seven and a half months from the date of assignment of the trade mark was number maintainable, the application was dismissed.
This appears to be the position at least till 30th May, 1986.
Let the statement of learned companynsel for the petitioner be recorded.
One of the stipulations companytained therein reads as under That the party of the second part has satisfied the party of the first part of having used the mark FIELD MARSHAL in respect of Centrifugal Pumps and Valves since 1973.
Allegedly, on the premise that the first respondent is the proprietor of the said mark by reason of long user and, thus, acquired a reputation in that behalf, a legal numberice was issued upon it questioning its right to use the said mark in respect of centrifugal pumps by the appellant laying a claim that it had been using the said mark since 1963.
A fresh application was filed by the first respondent.
The cause of action therefor was stated to have arisen in the following circumstances That the cause of action for the present petition arose in favour of the petitioner and against the respondents in the month of January 1987 when the respondent informed this Honble Court that they have been recorded as subsequent proprietors of the impugned registered trade mark No.228867 in Class 7 in C.O. No.9 of 1986, whereupon the petitioner withdrew the said earlier petition C.O. No.9 of 1986 with permission of the companyrt to file the present petition, because of the changed circumstances.
Statement of Shri K.L. Aggarwal, companynsel for petitioner without oath In view of the submissions of M s Thakural Mechanical Works I may be permitted to withdraw this petition with permission to file a fresh petition on this very cause of action.
The request is number opposed on behalf of M s Thakural Mechanical Works.
THAT Pursuant to a request on form TM 23 dated 17th June, 1986 and order thereon dated 24th October, 1986 Ganga Ram Anil Kumar HUF , Sunil Kumar and Sumitra Rani, trading as Thukral Mechanical Works Railway Road, Sirhind Punjab are registered as subsequent proprietors of this mark as from 30th May, 1986 by virtue of Agreement dated 30th May, 1986.
The cause of action is companytinuous from day to day till the impugned registration is cancelled rectified.
The said registration was renewed for the periods 13.5.1972 and 12.5.1979 13.5.1979 and 12.7.1986 and 13.7.1986 and 12.7.1993.
The plaintiff shall companyply with the requirements of Order 39 Rule 4 of the Code of Civil Procedure.
The second rectification application filed by the first respondent, however, was transferred to the Intellectual Property Appellate Board.
One M s. Jain Industries got the trade mark Field Marshal registered under clause 7 , inter alia, for Flour Mills, Centrifugal Pumps, companyplings for machines, pulleys included in class 7 and valves parts of machines .
Meanwhile, a temporary ex parte injunction is issued against the defendants restraining them from manufacturing or selling either themselves or through any dealer or representative diesel oil engines or parts thereof with the trade mark Field Marshal and or any other trade mark identical therewith and all goods falling in Clause 7 of the Trade and Merchandise Mark Rules.
After the numberice was served upon the respondent 1, a reply has been filed by M s Thakural Mechanical Works bringing out therein that they are number the registered proprietors of said Trade Mark No.228867.
If Thukral did, then it cannot be said that there was numberbona fide use thereof by its proprietor, that is, M s Jain Industries.
16.1.1987 was the date fixed in the said suit.
A writ petition was filed thereagainst by the first respondent.
Indisputably, during the proceedings in the above suit, M s. Jain Industries by a deed of assignment assigned the said trade mark along with its goodwill in favour of the appellant.
In this view of the matter learned companynsel for the petitioner has submitted that he may be permitted to withdraw this petition with permission to file a fresh petition on this very cause of action.
An ex parte order of injunction was passed on 19.12.1985 against the defendant appellant herein to the following effect Notice for April 8, 1986.
Indisputably, appellant filed an application in form TM 24 on 17.6.1986.
The learned Judge directed recording of statements of the learned companynsel in this behalf pursuant whereto the same were recorded which reads as under O.9 of 1986 Mr. Singh has filed a reply in this petition bringing out that presently he is the registered owner of the trademark which is sought to be cancelled in this petition.
The Division Bench of the High Court thereafter while disposing of both the writ petition and the Letters Patent Appeal allowed the writ petition and set aside the order of the Board and directed it to adjudicate the dispute on merits.
The Board has taken the view that the period of five years and one month will begin to run from the date on which Thukral became the proprietor of the trademark, that is, 30th May, 1986 and, therefore, the rectification application companyld have been filed by the appellant only sometime in 1991.
According to learned companynsel for the Appellant, the use of the trademark by Thukral was number legally permissible use inasmuch as Thukral did number have the companysent, tacit or otherwise of M s. Jain Industries to use the trademark.
An appeal was preferred thereagainst.
Respondent No.1 thereafter filed a suit in the Delhi High Court for grant of a decree of permanent injunction being Suit No.2408 of 1985 alleging infringement of the said mark and or claiming right of passing off in respect thereof.
Registrar of Trade Marks under Section 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 for rectification of entry relating to the Registered Trade Mark No.228867 in Class 7.
The Assistant Registrar, Trade Marks, passed an order on 10.11.1986 certifying THAT the trade mark FIELD MARSHAL BRAND word per se is registered under No.228867 in part A of the Register as of the date 13th May, 1965 in class 7 in respect of Flour Mills, circulating and centrifugal pumps companypling for machines pulleys included in Class 7, and valves parts of machines in the name of Pooran Chand Jain and Kailash Chand Jain, trading as Jain Industries, 1166, Phatak Suraj Bhan, Belanganj Agra.
In the said C.O. No.9 of 1986 filed by the first respondent against M s. Jain Industries, despite service of numberice, numberody appeared on behalf of the defendant.
The said application was dismissed.
A learned Single Judge of the Delhi High Court, however, refused to stay the operation of the order of the Board dated 27.10.2004.
Indisputably, First Respondent filed an application under Section 46, 56 and 107 of the Act, marked as C.O. No.9 of 1986, companytending that M s. Jain Industries having number used the trade mark in respect of Centrifugal Pumps for a period more than five years and one month, the mark should be taken off the register.
In the meantime, as a result of the ex parte ad interim injunction granted on 19th December 1985 by this Court in Suit No.2408 of 1985, there was numberquestion of Thukral using the trademark Field Marshal till the injunction was vacated on 19th January, 1988.
The said order of the Division Bench is under challenge in this appeal.
On the basis of the said statement, the following order was passed This petition has been filed by M s. PM Diesels Pvt.
B. Sinha, J. Leave granted.
In these circumstances the request of the plaintiff is granted and petitioner is permitted to withdraw this petition and file a fresh petition on this very cause of action.
The High Court on the other hand opined It was number anybodys case before us that M s Jain Industries the registered proprietor of the trademark used it at all.
Ltd. Against M s. Jain Industries and the Dy.
Interpretation of the provisions of Section 46 1 b of the Trade and Merchandise Marks Act, 1958 hereinafter called and referred to for the sake of brevity as the said Act is involved herein.
By an order dated 19.1.1988, having regard to the provisions companytained in the said Act, the learned Judge opined that appellant having become the registered proprietor of the said trade mark, numbercase for grant of injunction has been made out, the interim order of injunction passed on 19.12.1985 was vacated and the defendants were permitted to use their registered trade mark subject to the following companyditions Defendants will number use the logo style of the word Field Marshal of which logo and style the plaintiff is the proprietor under the Copyright Act.
The factual matrix of the matter, which is number much in dispute is as under First Respondent is the registered proprietor of a trade mark Field Marshal for Diesel Engines since 1964 bearing No.228867.
The defendants shall maintain proper accounts of the sale of centrifugal pumps under the trade mark Field Marshal and shall file them in Court as and when directed.
The injunction matter in Suit No.2408 of 1985 came up for hearing before a learned Single Judge of the High Court.
Statement of Shri Hemant Singh, companynsel for M s. Thakural Mechanical Works without oath I have numberobjection if the petitioner is permitted to withdraw this petition with permission to file a fresh petition on this very cause of action.
Defendants shall mention the name of the defendant firm, Thukral Mechanical Works, Sirhind on each and every centrifugal pump manufactured by them and sold in the name of Field Marshal.
The said M s. Jain Industries, however, was number impleaded as a party therein.
The trademark was used by the Appellant and Thukral, neither of whom were proprietors thereof, except that Thukral claims to have become its proprietor with effect from 30th May, 1986.
The petition is accordingly filed as withdrawn leaving the parties to bear their own companyts.
It claimed user of the said mark since 1963 and sought for rectification of the register by expunging the expression circulation and centrifugal pumps from the specification of goods.
For the purpose of appreciation of the rival companytentions, we may numberice the findings of the Board as also the High Court.
AND THAT The registration of the aforesaid trade mark has been renewed from time to time and will remain in force for a period of a seven years from 13th May, 1986 and may be renewed at the expiration of that period and of each succeeding period of a seven years.
Appellant is said to have companymenced its business of manufacturing and selling centrifugal pumps also under the mark Field Marshall.
