M/S P.M.DIESELS P.LTD. vs M/S THUKRAL MECHANICAL WORKS &

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on:- 16th October, 2023.
Date of Decision:- 2nd April, 2024.
+ C.O. (COMM.IPD-TM) 667/2022
+ CS (OS) 2408/1985 and I.A. 11856/2023
+ W.P.(C)-IPD 28/2021 & CM APPL. 20/2021
+ W.P.(C)-IPD 29/2021 & CM APPL. 25/2021
+ W.P.(C)-IPD 31/2021 & CM APPL. 22/2021
+ W.P.(C)-IPD 32/2021 & CM APPL. 21/2021
+ W.P.(C)-IPD 33/2021 & CM APPL. 24/2021
+ W.P.(C)-IPD 34/2021 & CM APPL. 23/2021
+ W.P.(C)-IPD 35/2021 & CM APPL. 27/2021
+ W.P.(C)-IPD 36/2021 & CM APPL. 19/2021
+ W.P.(C)-IPD 38/2021 & CM APPL. 26/2021
+ W.P.(C)-IPD 39/2021 & CM APPL. 18/2021

M/S. P.M. DIESELS P. LTD. ….. PETITIONER
versus
M/S. THUKRAL MECHANICAL WORKS
& ORS. ….. RESPONDENTS

AND
+ CS (COMM) 473/2016 & I.A.8865/2022

SUMITA RANI PROP.THUKRAL MECH. WORKS ….. Plaintiff
versus
NITIN MACHINES TOOLS AND ORS. ….. Defendants
Appearances:

Mr. N. Mahabir, Ms. Noopur Biswas & Mr. P.C. Arya, Advocates (M: 9166036065) for Petitioners.
Mr. Hemant Singh, Mr. Sachin Gupta, Mr. Ajay Kumar, Ms. Yashi Agrawal, Ms. Swati Meena, Ms. Gaurangi Sharma & Mr. Rohit Pradhan, Adv. (M: 9811180270)
Mr. Harish V. Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat, Mr. Alexander Mathai Paikaday, Advocates for CGPDTM

CORAM:
JUSTICE PRATHIBA M. SINGH

JUDGMENT

Prathiba M. Singh, J.
The present judgement deals with 13 proceedings including two civil suits, one rectification petition and 10 writ petitions which are disposed of by a common judgement. The contents of the judgement are divided in the following sections:
Section A
Background
Paras 1-26
Section B
Submissions of parties
Paras 27-54
Section C
Discussion & Analysis of Evidence
Paras 55-63
Section D
Findings on Issues & Relief
Paras 63-153
Section E
Summary of conclusions
Paras 154-161
A. Background
1. The present suits being CS (OS) 2408/1985 and CS(COMM) 473/2016 and also the other petitions relate to the trade mark ‘FIELDMARSHAL’/ ‘FIELD MARSHAL’. The earliest suit titled ‘M/s. P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works’ in respect of the said mark is Suit No. 2408/1985, which was originally instituted before this Court and was, thereafter, vide orders dated 31st July, 2003 and 15th September, 2003, transferred to the Karkardooma District Court, due to the increase in pecuniary jurisdiction of the High Court. Vide order dated 12th May, 2022, the said suit was transferred by this Court and tagged along with CS (COMM) 473/2016.
2. In all these proceedings, the dispute relates to the trade mark ‘FIELDMARSHAL’. Primarily, there are two parties which are as under:
i) The Plaintiff – P.M. Diesels Pvt. Ltd. – referred to as ‘P.M. Diesels’
ii) The Defendant-M/s.Thukral Mechanical Works, which is a proprietary concern of Mrs. Sumita Rani Thukral – referred to as ‘Thukral’.
3. The details of the proceedings which have been heard, and in which the present judgment is being pronounced are as follows:
S.No
Suit/
Petition no.
Lis
1.
Suit No. CS (OS) 2408/1985
P.M. Diesels Pvt. Ltd. v. Thukral Mechanicals Works.
This is a suit filed by P.M. Diesels against Thukral Mechanicals Works seeking injunction against the use of the mark ‘FIELDMARSHAL’ or any other mark deceptively similar to the Plaintiff’s mark ‘FIELDMARSHAL’ bearing registration no. 224879 in class 7. The Plaintiff also seeks an injunction restraining the Defendant from passing off diesel oil engines, and parts thereof such as pumps and electric motors etc. under the mark ‘FIELDMARSHAL’.

In this suit, P.M. Diesels claims that it is the proprietor of the following registrations:
* Trade mark bearing no. 224879 for the word ‘FIELDMARSHAL’ in class 7 dated 16th October, 1964. This mark was advertised in the Trade Marks Journal No. 380 dated 1st April, 1965. Use is claimed since 1963.
* Trade mark bearing no. 252070 for the mark ‘FIELDMARSHAL’ written in a particular style, in class 7 dated 4th October 1968. This mark was advertised in Trade Marks Journal No. 520 dated 1st December, 1971. Use is claimed since 1963
* Trade mark bearing no. 252071B for the word ‘FIELDMARSHAL’ in class 7 dated 4th October 1968. This mark was advertised in the Trade Marks Journal No. 525 dated 16th April, 1971. Use is claimed since 12th August, 1965.
2.
CS(OS) 3804/1992
[renumbered CS(Comm) 473/2016]

Sumita Rani v. Nitin Machine Tools Pvt. Ltd., Popular Machinery Store, M/s. P. M. Diesels Pvt. Ltd.

This is a suit by Sumita Rani seeking permanent injunction to prevent the Defendants-Nitin Machine Tools Pvt. Ltd., Popular Machinery Store, and P.M. Diesels from using the trade mark ‘FIELDMARSHAL’ or any other mark that is identical or deceptively similar to the Sumita Rani’s registered trade mark no. 228867 dated 13th May, 1965 in class 7, advertised in Trade Marks Journal No. 406, dated 1st May, 1966.

User is claimed since January, 1963. This trade mark was earlier registered by M/s. Jain Industries and Sumita Rani Thukral obtained assignment of the mark on 17th June, 1986, after the filing of the 1985 suit i.e. 18th December, 1985.

3.
C.O. No. 6/1987

[renumbered as C.O. (COMM.IPD-TM)-667-2022]

P. M. Diesels Pvt. Ltd. v. Thukral Mechanical Works & Registrar of Trade Marks
Cancellation petition filed by P.M. Diesels Pvt. Ltd. seeking cancellation of the registration in favour of Thukral Mechanical Works bearing no. 228867 in class 7 dated 13th May, 1965.

This cancellation petition had been dismissed for non-prosecution vide order dated 28th January, 2021 but was restored by this Court vide order dated 12th May, 2022.
4.
W.P.(C)-IPD 28/2021

M/s. P.M. Diesels Pvt Ltd v. Thukral Mechanical Works, Asst. Registrar of Trade Marks
The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423262 dated 16th June, 1984 in class 7.
5.
W.P.(C)-IPD 29/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423264 dated 16th June, 1984 in class 7.
6.
W.P.(C)-IPD 31/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks
The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423260 dated 16th June, 1984 in class 7.
7.
W.P.(C)-IPD 32/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423259 dated 16th June, 1984 in class 7.

8.
W.P.(C)-IPD 33/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423267 dated 16th June, 1984 in class 7.
9.
W.P.(C)-IPD 34/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423261 dated 16th June, 1984 in class 7.

10.
W.P.(C)-IPD 35/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks
The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423265 dated 16th June, 1984 in class 7.

11.
W.P.(C)-IPD 36/2021
M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423266 dated 16th June, 1984 in class 7.

12.
W.P.(C)-IPD 38/2021

M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks
The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELD MARSHAL’ vide application no. 423258 dated 16th June, 1984 in class 7.

13.
W.P.(C)-IPD 39/2021
M/s. P. M. Diesels Pvt. Ltd. v. M/s. Thukral Mechanical Works, Asstt. Registrar of Trade Marks

The present petition challenges order dated 11th February, 2005, passed by the erstwhile IPAB.

The said order of the IPAB dismissed P.M. Diesel’s appeal against the decision of the Assistant Registrar of Trade Marks, Ahmedabad, dated 12th August, 1992, refusing the registration of P.M. Diesel’s trade mark ‘FIELDMARSHAL’ vide application no. 423263 dated 16th June, 1984 in class 7.

Proceedings in Civil Suit (OS) 2408/1985
4. This was the first proceeding between the parties filed way back in 1985, wherein P.M. Diesels sought an injunction against Thukral Mechanical Works using the mark ‘FIELDMARSHAL’ in relation to goods falling under class 7. According to the plaint, the cause of action for filing the present suit began in June 1982 when P.M. Diesels became aware of Thukral’s application for the registration of the mark ‘FIELDMARSHAL’. P.M. Diesels responded promptly by issuing a legal notice on 29th June, 1982. As per the plaint, at that time, Thukral’s products under the said mark were not yet available in the market. When Thukral’s application for the mark ‘FIELDMARSHAL’ bearing no. 363764 dated 14th July, 1980 was advertised in the Trade Mark Journal No. 827 on 16th November, 1983, P.M. Diesels opposed it vide Opposition No. DEL-4109 dated 7th April, 1984, noting that the mark was still not in practical use by Thukral. Thereafter, the plaint avers that in December 1985, Thukral obtained or secured a nameplate from the market on 17th December, 1985, under the mark ‘FIELDMARSHAL’. Vide order dated 19th December, 1985, an ex-parte ad-interim injunction was granted in the following terms:
“I.A. 7329/85.
Notice for April 8, 1986.
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. The plaintiff shall comply with the requirements of Order 39 Rule 4 of the Code of Civil Procedure”

5. In the meantime, a cancellation petition being C.O. No. 6/1987 titled ‘P.M. Diesels Pvt. Ltd. v. Thukral Mechanical Works’ was filed by P.M. Diesels against M/s. Jain Industries, under Sections 46, 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter, ‘1958 Act’) seeking cancellation of trade mark registration bearing no. 228867 in class 7 in respect of the same mark. This mark was later assigned on 17th June 1986, by M/s. Jain Industries to Thukral.
6. Vide order dated 16th September, 1987, C.O. No. 6/1987 was directed to be listed along with the 1985 suit. In addition, records of the Opposition No. DEL-4109 to application no. 363764 in class 7 were also summoned from the Registrar of Trade Marks. Vide judgment dated 19th January, 1988, the ex-parte injunction was vacated in the following terms:
“For the aforesaid reasons, I do not find any case being made out for restraining the defendants from using their registered trade mark during the pendency of the suit, I accordingly vacate the interim injunction already granted and permit the defendants to use their registered trade mark, but subject to these conditions :- (a) Defendants will not use the logo/style of the word “Field Marshal” of which logo and style the plaintiff is the proprietor under the Copyright Act.
(b) 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”,
(c) The defendants stall 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, applications are accordingly disposed of. There will be no orders as to costs.”

7. On 5th April, 1994, the following issues were framed in the 1985 suit:
“1. Whether the suit is barred on account of acquiescence, latches and delay? OPD
2. Whether this Hon’ble Court has got territorial jurisdiction to the present suit? OPP
3. Whether the goods of the defendant under the trade mark ‘FIELDMARSHAL’ are being passed off, as the goods of the plaintiff? OPP
4. Whether the defendant has infringed the registered copyright of the plaintiff? If so its effect? OPP
5. Whether the plaintiffs are entitled to rendition of accounts as claimed in the plaint? OPP
6. Whether there is misrepresentation of facts on the part of the plaintiff? If so, to what effect? OPD
7. Whether the plaintiff is the proprietor of the trade mark ‘FIELDMARSHAL’ in question and a has the right of exclusive use thereof in respect of centrifugal pumps or any other goods in the same class of goods and of the same description? OPP
8. Relief.”

8. Vide orders dated 7th July, 1995 and 4th December, 1995, in view of the fact that the list of witnesses filed by P.M. Diesels and Thukral were common in the suit as well as in the cancellation petition, the Court directed that the evidence in both the proceedings be recorded together.
9. On 20th September, 2006, the suit was stayed till the final disposal of the Special Leave Petition (‘SLP’) filed before the Supreme Court arising out of the cancellation petition being C.O. No. 6/1987 seeking cancellation of Thukral’s registration. After 2nd August, 1987, the matter was again restored and clubbed with all the connected matters on 31st May, 2022. Vide order dated 8th March, 2022 passed in CS(OS) 3804/1992 [renumbered as CS (Comm) 473/2016], Suit No. 2408/1985 was consolidated with all the other matters, and was accordingly transferred to this Court in terms of Rule 26 of the Delhi High Court Intellectual Property Division Rules, 2022. Evidence qua the suit Suit No. 2408/1985 was led primarily in the cancellation petition being C.O. 6/1987.
Proceedings in C.O. No. 6/1987
10. In the present cancellation petition filed by P.M. Diesels, rectification of the mark ‘FIELDMARSHAL’ bearing registration no. 228867 dated 13th May, 1965 in class 7 registered in the name of Thukral Mechanical Works is sought. The said cancellation petition was primarily filed on the ground that the said mark was wrongly registered in the Trade Marks Register by M/s. Jain Industries, under the provisions of the 1958 Act. According to P.M. Diesels, M/s. Jain Industries falsely claimed that they were the owners/proprietors of the mark ‘FIELDMARSHAL’ mark for circulation or centrifugal pumps, despite having never used it for those products. Thus, the said mark was registered without a genuine intention to use it for the specified products (circulation/centrifugal pumps), and since there hasn’t been any real use of the said mark by the registered proprietors for more than five years up to a month before filing the said cancellation, the said mark ought to be cancelled or rectified according to Section 46(1) of the 1958 Act.
11. According to P.M. Diesels, the use of the said mark by Thukral would cause confusion and deception among the public and within the trade, and thus deserves to be rectified, as the centrifugal pumps or circulation pumps under the impugned mark ‘FIELDMARSHAL’ are likely to be mistaken for those of P.M. Diesels’.
12. Further, it is argued by P.M. Diesels that the assignment of the said mark by M/s. Jain Industries and its recordal by Registrar of Trade Marks in the name of Thukral is invalid, and contrary to the provisions of the 1958 Act. This is primarily because M/s. Jain Industries, Agra, was not in existence and had ceased to exist when the said mark was assigned. According to the cancellation petition, the assignment is merely an instrument and abuse of the legal process to allow one infringer to continue the infringement of another’s legal and vested rights in a mark and to defeat the ends of justice. The entry relating to the said mark and its assignment was wrongly made and thus, continues to be wrongly exist on the Register of Trade Marks.
13. Vide order dated 27th October, 2004, the cancellation petition was dismissed. The matter was carried in appeal to the ld. Division Bench of the Delhi High Court, which reversed the judgment of the erstwhile IPAB, vide order dated 18th January, 2006. However, the Supreme Court, vide order dated 18th December, 2008, set aside the order of the ld. Division Bench and remanded the matter back to the IPAB. The said order of the Supreme Court reads as under:
“29. 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-a-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 proceeded on the basis of such presumption. It is not correct that no cause of action survived against 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 the respondent No.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.
30. Two interpretations of the said provision Section 46(1)(b) are possible. While interpreting the same, however, certain basic 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. The right of a registered trade mark is not lost automatically on the expiry of five years and one month. It does not provide for a `sun set’ 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.
31. Both the findings of the High Court which we have noticed hereinbefore are findings on question of law and in that view of the matter the contention of Mr. Sudhir Chandra that the merit of the matter is yet to be gone into by the Board cannot be a ground for ignoring the submissions made at the bar.
…
33. We do not think that the approach of the learned author is entirely correct. An assigner 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 paragraph 25 supra.

34. 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 in the light of the legal principles explained above.”

14. The matter thereafter remained pending before the erstwhile IPAB. Vide order dated 27th January, 2011, an application for impleadment of M/s. Jain Industries was considered by the IPAB. Vide the said order, the prayer for impleadment of M/s. Jain Industries was rejected. The said order was challenged before the Delhi High Court in a writ petition bearing no. W.P.(C) 4846/2011. The said writ petition was disposed of on 9th October, 2020.
15. Thereafter, vide order dated 12th May, 2022, C.O. No. 6/1987 was directed to be heard along with Suit No. 2408/1985. The relevant portion of the said order reads as follows:
“9. Post the enactment of The Tribunals Reforms Act, 2021 all cancellation petitions are to be now heard by the High Court. The Delhi High Court has constituted the Intellectual Property Division for hearing these matters. Considering the fact that CO No.6/1987 was consolidated with Suit No.2408/1985, it is directed that the records of the said cancellation petition be also called from IPAB. The same may be registered as a cancellation petition in the IP Division and be listed along with the present batch of matters.”

16. Common evidence was led in the said suit and in the cancellation petition. Oral evidence of the following witnesses was led:
PW- 1
Mr. J.R. Vekaria
PW- 2
Mr. Chandra Kant Popat Lal Patel
PW- 3
Mr. Karam Chand Aneja/Mr. K.C. Aneja
PW- 4
Mr. Shiv Avtar Gupta

PW- 5
Mr. Ram Dhan Aneja/Mr. R.D. Aneja
PW- 6
Mr. Rajender Kumar
DW-1
Mr. Sushil Thukral
DW-2
Mr. Faqueer Chand, dealer of M/s.Thukral Mechanical Works
DW-3
Mr. Padam Chand, dealer of M/s.Thukral Mechanical Works
Proceedings in Suit No. 3804/1992 [renumbered as CS (Comm) 473/2016]
17. In this suit, according to Thukral, it had been manufacturing and selling centrifugal pumps since 1973, and in that year, it had genuinely adopted the said mark ‘FIELDMARSHAL’ for pumps and their parts. According to Thukral, despite its long-standing use and registration of the ‘FIELDMARSHAL’ mark under registration no. 228867, M/s. Nitin Machine Tools Pvt. Ltd. and its associated agent or dealer, began using the identical mark ‘FIELDMARSHAL’ for centrifugal pumps and parts, infringing Thukral’s exclusive rights to the said mark.
18. As per Thukral’s suit, the ‘FIELDMARSHAL’ mark, registered under no. 228867 dated 13th May, 1965, was initially granted in the name of Mr. Pooran Chand Jain and Mr. Kailash Chand Jain (or Mr. K.C. Jain) of M/s. Jain Industries in Agra. The said mark, along with the business’ goodwill, was later assigned vide assignment deed dated 30th May, 1986 to Mr. Ganga Ram, Anil Kumar (HUF), Sunil Kumar, and Sumita Rani, who traded as Thukral Mechanical Works in Sirhind, Punjab. Following a request form filed on 17th June, 1986, the Registrar of Trade Marks approved the change, and the assignees were listed as the new proprietors of the said mark ‘FIELDMARSHAL’.
19. Subsequently, the business structure of Thukral Mechanical Works changed. Anil Kumar (HUF) retired, and the remaining partners, Ganga Ram, Sunil Kumar, and Sumita Rani, assumed full ownership of the firm’s assets and liabilities starting from 1st April, 1989. As of 1st April, 2002, Smt. Sumita Rani Thukral is the sole proprietor of the said firm- Thukral Mechanical Works.
20. At paragraph 8 of Thukral’s plaint, it is asserted that the said ‘FIELDMARSHAL’ mark had been used since 1973, and they held rights to it since 1965 vide the said assignment deed. Prolonged use coupled with the said trade mark registration granted exclusive rights to the ‘FIELDMARSHAL’ mark for centrifugal pumps.
21. The plaint avers that the cause of action for the said suit arose in the month of September, 1992, when M/s. Nitin Machine Tools Pvt. Ltd. started the manufacture and sale of centrifugal pumps under the trade mark ‘FIELDMARSHAL’ and started the sale thereof throughout India and through Popular Machinery Stores at Delhi. According to Thukral, the cause of action further arose on 18th September, 1992 when Popular Machinery Store sold the goods under the said mark. In this suit, P.M. Diesels is impleaded as Defendant No. 3.
22. Summons were issued in the present suit on 1st October, 1992. Vide order dated 1st October, 1992, an ex-parte ad-interim order was granted in the following terms:
“I.A.12345/92
Notice returnable before the J.R. on 7.1.1993.
The defendant, their servants, agents and representatives are restrained from manufacturing, selling and/or offering for sale or dealing in centrifugal pumps, flour mills, circulating and coupling for machines, pulleys and valves and/or parts thereof and other cognate or allied goods under the mark FIELDMARSHAL or any other mark as may be deceptively similar to the trade-mark of the plaintiff, till further orders.
Proviso to Rule 3 of Order 39 CPC to be complied with within 10 days”

23. The said order was vacated on 27th May, 1993 by a detailed judgment of a ld. Single Judge. The following issues were thereafter framed in this suit on 19th August, 2004:
“1. Whether the suit has been signed and verified by a competent person? OPP
2. Whether the suit has been properly valued for the purposes of court fee and jurisdiction? OPP
3. Whether the plaintiff is the registered owner through assignment of the trade mark “Field Marshal” in respect of centrifugal pumps? OPP
4. Whether the defendant are the prior user of the trade mark “Field Marshal” in respect of centrifugal pumps than the plaintiff? OPD
5. Whether the plaintiff has acquiesced to the user of the trade mark by the defendants, if so, its effect? OPD
6. Whether the use of trade mark “Field Marshal” by the defendant amounts to infringement of the registered trade mark no- 228867 and passing off and if yes, its effect? OPP
7. Whether the plaintiff is entitled to the decree of injunction as prayed for? OPP
8. Whether the plaintiff is entitled to the decree of rendition of accounts as prayed for? OPP
9. Whether the goods in respect of which the defendants are using the trade mark “Field Marshal” and the goods in respect of which plaintiff is using the trade mark “Field Marshal” are cognate and allied goods ?OPD
10. Relief.”

24. In this suit, the evidence of the following witnesses has been led by parties:
PW- 1
Mr. Sushil Thukral, husband of Mrs. Sumita Rani
PW- 2
Mr. Padam Chand (Evidence by way of Affidavit)
PW-3
Mr. Faqueer Chand, dealer of M/s.Thukral Mechanical Works
DW-1
Mr. Nitin Patel
Evidence by way of Affidavit
Karam Chand Aneja

Bhim Sen

Summary of the 10 writ petitions
25. These writ petitions arise out of 10 applications filed by P.M. Diesels seeking registration of the label mark ‘FIELDMARSHAL’ in different Indian languages. The goods for which the applications are filed are ‘Diesel Oil Engines’ (not for land vehicles) and parts thereof, centrifugal pumps, submersible pumps, electric motors (not for land vehicles), mono block, foot valve being all goods included in class 7 and the user claimed is since the year 1975.
26. The applications were opposed by Thukral Mechanical Works on the ground that it is the registered proprietor of the mark ‘FIELDMARSHAL’ with various registrations. Evidence was filed by both parties. Vide order dated 11th February, 2005, the oppositions were allowed, and the applications of P.M. Diesels were rejected1.
B. Submissions of parties

Submissions on behalf of P.M. Diesels
27. At the outset, Mr. Mahabir, ld. Counsel for P.M. Diesels, places reliance on Ex. PW-2/5 to Ex.PW-2/72, which are trade mark registrations of P.M. Diesels. They relate to the ‘FIELDMARSHAL’ word mark, ‘FM’ logo and ‘FIELDMARSHAL’ writing style, along with their respective renewals, Legal Proceeding Certificates (hereinafter, LPCs), application forms and other related documents. The said registered trade marks are as follows:
Trade Mark
Regd. No.
Class
Trade Mark Journal Extract
FIELDMARSHAL
(word per se)
224879
7

FIELDMARSHAL
(written in style)
252070
7

F.M.
FIELDMARSHAL
252071
7

28. There is also another advertisement in the Trade Mark Journal No. 902 in respect of the mark no. 389729 dated 10th May, 1982 in class 7, extracted below:

29. The above documents would show that the initial trade mark application made by P.M. Diesels is for the following goods:
“Diesel oil engines (not for land vehicles and parts thereof; monoblock, electric motors, pumps included in class7)”
30. However, in one of the documents, there are multiple TM-1 forms in the original records obtained from the Trade Marks Registry. In one of the TM-1 forms, an exception to the following effect has been added in the following manner:

31. In the journal extract, the exception has been added in the initial description and not as a part of the exception in the portion relating to goods. This shows that the exception that has been inserted. As per ld. Counsel Mr. Mahabir, this is an interpolation.
32. Mr. N. Mahabir, ld. Counsel for P.M. Diesels relies upon the following documents to show the use of the mark ‘FIELDMARSHAL’ by P.M. Diesels:
i. Ex.PW-2/9 to Ex.PW-2/163, and the other trade marks that are subject matter of the above ten Writ Petitions. Advertisements in the Trade Mark Journal for P.M. Diesels’ mark filed on 10th May, 1982 with user since 1965. The said mark is advertised with the disclaimer ‘except pumps and motors’ in respect of which the mark is proposed to be used. This disclaimer was disputed by P.M. Diesels, as already stated above.
ii. Ex.PW-2/18 to Ex.PW-2/234, are letters written by the dealers of P.M. Diesels to Thukral Mechanical Works to obtain centrifugal pumps under the mark ‘FIELDMARSHAL’.
iii. Ex. PW-1/1 and Ex. PW-1/1A5: An Agreement for dealership for ‘FIELDMARSHAL’ centrifugal pumps, executed by J. Chandrakant & Co. and M/s. Indira Engineering Ahmedabad Pvt. Ltd. J. Chandrakant & Co.  is a sister concern of P.M. Diesels. It is also stated to be the name of the second son of the founder of the firm.  The mark ‘FIELDMARSHAL’ is in respect of centrifugal pumps.
iv. Ex. PW-1/1 and Ex. PW-1/1-A6: Letter dated 26th April, 1975 issued by M/s. Patel Manufacturers for M/s. Indira Engineering Ahmedabad Pvt. Ltd., confirming the said firm’s use of the mark ‘FIELDMARSHAL’ for centrifugal pumps.
v. Ex. PW-1/2 to Ex. PW-1/67: Sales by J. Chandrakant & Co. of only power-driven pumps, which are nothing but centrifugal pumps.
vi. Ex. PW-2/1 to Ex. PW-2/1A8: General power of attorney by P.M Diesels, issued for filing of the suit.
vii. Ex. PW-2/29 and Ex. PW-2/2A10: Original Invoices showing the use of mark ‘FIELDMARSHAL’ for diesel oil engines by P.M Diesels. Invoices from 4th October 1963, of products using the mark ‘FIELDMARSHAL’. (Exhibiting the Sale figures from 1963 to 1984 -these documents are disputed by Thukral Mechanical Works) Advertisement expenses are also relied upon.
viii. Ex. PW-2/3A11 and Ex. PW-2/312: Are invoices of the year 1963 (disputed by Thukral Mechanical Works).
ix. Ex. PW-2/413 and Ex. PW-2/4A14: Invoices showing booking of advertisements and copies of advertisements from 196315. Thukral Mechanical Works objected to the said invoices as the same have already been exhibited.
x. Ex. PW-2/5 to Ex. PW-2/716: Trade mark registrations of P.M. Diesels.
xi. Ex. PW-2/1717: This is a letter by M/s.Field Marshal Agencies dated 19th May, 1992, confronted to witness of P.M. Diesels by Thukral Mechanical Works. Even the said letter shows that the mark ‘FIELDMARSHAL’ was being used. Three months post this letter, the suit was filed.
xii. Ex. PW-2/18- Ex. PW 2/2318: – Letters by dealers of P.M. Diesels dated 6th May, 1991, 25th May, 1991, 31st August, 1992 and so on, which were confronted to P.M. Diesels’ witness by Thukral Mechanical Works to argue that they were selling the ‘FIELDMARSHAL’ pumps of Thukral Mechanical Works in 1990s.
xiii. Ex. PW-2/2419 – Legal notice issued by P.M. Diesels. Mr. Mahabir ld. Counsel submits on the basis of the footer of the said legal notice, that the sellers were distributors of P.M. Diesels for diesel engines, motors and monoblock pumps, which are nothing but centrifugal pumps with a motor.
xiv. Ex. PW-3/3 to Ex. PW3/520- These letters were confronted by Thukral Mechanical Works to PW-3 to establish that some entities were asking for supply of ‘FIELDMARSHAL’ pumps from Thukral Mechanical Works.
xv. Ex. PW-4/1 & Ex. P-1021, Ex. PW-4/2 & Ex. PW-4/322- These documents were confronted to PW-4- Mr. Shiv Avtar Gupta by Thukral Mechanical Works. PW-4 was purchasing from Thukral Mechanical Works; however the mark ‘FIELDMARSHAL’ did not appear on them. These are also documents confronted to PW-4 to prove the use of mark ‘FIELDMARSHAL’.
xvi. Ex-PW-4/D123: This document, submitted on behalf of P.M. Diesels, is a copy of the invoice dated 22nd October, 1995 produced by PW-4 – Shiv Avtar Gupta, showing that he sold pumps to PW-4 without the mark ‘FIELDMARSHAL’. The Court had directed the said witness to produce the original invoice, which was not produced. Accordingly, p. 401, which is a carbon copy of the said invoice, was confronted to PW-4. On 17th December, 1998, the Court accepted the carbon copy and exhibited it as Ex. PW-4/D1. It was held that PW-4 was deliberately withholding the original.
xvii. Ex. PW-5/1 and Ex. PW-5/224: Two invoices relied upon by P.M. Diesels to show that in the original invoice at p. 403, the mark ‘FIELDMARSHAL’ does not appear in the documents filed by Thukral Mechanical Works before the Trade Marks Registry.
33. Mr. N. Mahabir, ld. Counsel for P. M. Diesels, relying on the above documents, submits that the core of the dispute is the legitimacy of Thukral Mechanical Works’ registration of the ‘FIELDMARSHAL’ trade mark. One of the grounds is the lack of prior use evidence prior to January 1988, the submission of allegedly forged documents to support Thukral’s application, and disputes over P.M. Diesels’ application process itself, such as the unauthorized amendment in the form of a handwritten note. Secondly, it is argued that the vacation of the temporary ex-parte injunction, initially granted in favor of P.M. Diesels, was unjustified. Furthermore, Thukral’s registration of the said mark was improperly granted, and the evidence supporting Thukral’s claim to the mark was not valid (e.g., due to the submission of forged invoices). In support of the above submissions, the following facts are relied upon:
i) Prior to January 1988, there is no document from Thukral Mechanical Works indicating the use of the mark ‘FIELDMARSHAL’. The sole document available is the registration certificate from 1966.
ii) In CS (OS) 2408/1985, a temporary ex-parte injunction was granted in favour of P.M. Diesels on 19th December, 1985. The ex parte injunction was vacated by ld. Single Judge on 19th January, 1988, in view of the trade mark registration in favour of Thukral Mechanical Works.
iii) Reliance is placed on the Trade Mark Registry’s record in the application filed by P.M. Diesels where a handwritten note has been made, removing certain goods from the application by adding the words ‘except’25. The interpolation is disputed by P.M. Diesels.
iv) Reliance is placed upon the trade mark application no. 363764 filed in class 7 by Thukral Mechanical Works, which was opposed by P.M Diesels vide Opposition No. DEL-4109 dated 10th December, 1983. This application was later on withdrawn as recorded vide order dated 20th April, 1987 by Thukral Mechanical Works, however, Mr. Mahabir, ld. Counsel relies upon the Evidence in Support of Application26 dated 24th August, 1985 filed in the said opposition proceedings by Thukral Mechanical Works of Mr. Anil Kumar, Partner, where it is admitted as under:
* That the products have been sold in Delhi:
“That I am fully acquainted with the material facts and circumstances of the case of my firm’s application (no.363764) for the Registration of a Trade-mark comprising of the word ‘FIELD-MARSHAL’, as word per se, in Class 7 (in respect of the ‘Band Reflux-Valves, Centrifugal-Pumps and Parts thereof included in Class 7 for sale in the ‘States of Punjab, Haryana, Himachal Pradesh, Jammu & Kashmir, Uttar Pradesh, Rajasthan, Madhya Pradesh, Andhra Pradesh and Bihar and the Union Territories of Chandigarh & Delhi), and the opposition lodged thereto, (under no. DEL-4109) by one M/s.P.M. Diesel Private Limited/Rajkot.”
* That centrifugal pumps are also known as power driven pumps:
“9. That my firm’s aforesaid goods are of particular different kind & description, and are used for different purposes. These are used only for farming /agricultural purposes, and their main function is to pull the water from earth, by working in a rotational-system, with the help of power of any kind. These centrifugal-Pumps are also knows as ‘POWER-DRIVEN-PUMPS’, in the ordinary-language of the customers/ consumers.
* That Thukral Mechanical Works claims that valves and centrifugal pumps are different from P.M. Diesels’ diesel oil engines, under the mark ‘FIELDMARSHAL’.
16. That the goods namely : Bend-Reflux-Valves and the Centrifugal-Pumps are purely different from the opponents’ goods namely ‘Diesel-Oil-Engines/ Electric-Motors’. My Firm’s aforesaid particular goods, being of different kind & description, are sold, even upon the counters of the dealers of the opponents’ company, by my said firm under the Trade-Mark ‘FIELD MARSHAL’. To this effect, few traceable- letters addressed to my firm by the Firms (who are the dealers of my Applicant-Firm as well as also of the Opponents’ Company too) demanding the aforesaid goods under the Trade-Mark ‘FIELD MARSHAL’ may please be referred to. (Exhibit CL-1 to CL-14). I append hereinbelow the names & addresses of such Firms/Dealers…”

* That Thukral Mechanical Works’ products are sold from the same counters from where P.M. Diesels’ products under the mark ‘FIELDMARSHAL’ i.e., diesel oil engines are sold.
16. That the goods namely : Bend-Reflux-Valves and the Centrifugal-Pumps are purely different from the opponents’ goods namely ‘Diesel-Oil-Engines/ Electric-Motors’. My Firm’s aforesaid particular goods, being of different kind & description, are sold, even upon the counters of the dealers of the opponents’ company, by my said firm under the Trade-Mark ‘FIELD MARSHAL’. To this effect, few traceable- letters addressed to my firm by the Firms (who are the dealers of my Applicant-Firm as well as also of the Opponents’ Company too) demanding the aforesaid goods under the Trade-Mark ‘FIELD MARSHAL’ may please be referred to. (Exhibit CL-1 to CL-14). I append hereinbelow the names & addresses of such Firms/Dealers…”

* In fact, in support of this application, Thukral Mechanical Works filed invoices before the Trade Mark Registry where the mark ‘FIELDMARSHAL’ was reflected in the invoices. However, when it was discovered that the said invoices were forged and fabricated, the application itself was withdrawn vide letter dated 20th March, 1987. P.M. Diesels has obtained certified copies of the invoices, which have been filed on record along with the accompanying documents27.
v) In conclusion, Mr. N. Mahabir, ld. Counsel submits as under:
* P.M. Diesels’ use of the mark ‘FIELDMARSHAL’ for diesel oil engines is from 1963, which pre-dates use by Thukral Mechanical Works.
* P.M. Diesels is selling centrifugal pumps under the mark ‘FIELDMARSHAL’ since 1975.
* P.M. Diesels has been advertising the mark ‘FIELDMARSHAL’ since 1963.
* Even if it is presumed that centrifugal pumps were not sold by P.M. Diesels, diesel oils engines and pumps are closely interlinked to each other as the diesel oil engine forms an essential component of centrifugal pumps as a whole. The diesel oil engines were an integral part of the centrifugal pumps which would be the basis for their functioning when there was no other electrical source.
* The class of customers are the same i.e., the farmers and other workers who work in agricultural fields and farms.
vi) He, thus, submits that CS(OS) 2408/1985 deserves to be decreed against Thukral Mechanical Works. C.O. 6/1987, now numbered as C.O. (COMM.IPD.-TM) 667/2022 deserves to be allowed and the mark of Thukral Mechanical Works qua the centrifugal pumps deserved to be cancelled from the register.
34. Mr. Mahabir, ld. Counsel placed reliance on the following judgments:
i) L.D. Malhotra v. Ropi Industries28 for the proposition that if use of the mark is likely to deceive or cause confusion i.e., passing off, then the said mark ought to be cancelled as it would be an entry wrongly remaining on the Register of Trade Marks.
ii) Punjab Tractors Ltd. v. Shri Pramod Kumar Garg29, where the ld. Single Judge of this Court was considering the question as to whether the goods in the said case i.e., diesel oil engines and tractors, harvesters combines and forklifts are goods of same description.
iii) Pramod Kumar Garg v. Punjab Tractor Ltd30. In the appeal against the decision of the ld. Single Judge, the ld. Division Bench noted in paragraph 16 that since the products are used in agriculture sector, where customers are likely to be less discerning, they might assume the source of supply to be the same. Additionally, the nature of the evidence provided by the Defendant was called into question in this case.
iv) Decision of the Registrar of Trademarks in the opposition proceedings filed by P.M. Diesels opposing the registration of the mark ‘FIELDMARSHAL’ for rubber belting for machinery. The Registrar held that, though, the goods are not identical, they are goods of the same description and are allied goods. Reliance is placed on the finding of the Registrar to uphold the user of the mark by P.M. Diesels as also its reputed and well-known status.
Submissions on behalf of Thukral Mechanical Works

35. Mr. Hemant Singh, ld. Counsel along with Mr. Sachin Gupta, Advocate, made his submissions on behalf of Thukral Mechanical Works, which is a proprietary concern of Ms. Sumita Rani. The broad submissions of Mr. Hemant Singh are as under:
i) P.M. Diesels has primarily argued passing off in CS (OS) 2408/1985 on the strength of P.M. Diesels being the prior user of the mark ‘FIELDMARSHAL’ by claiming that the goods diesel engines and centrifugal pumps are cognate and allied and that there is confusion. Thus, injunction is being sought.
ii) The above position taken by P.M. Diesels is in contradiction to the pleadings in the plaint, where they claimed the adoption and use of the ‘FIELDMARSHAL’ mark for diesel oil engines, including parts thereof, as well as for centrifugal pumps, motors, and their parts, since 1963. The original plea in the plaint was based on use of the mark even for centrifugal pumps since 1963. However, when Thukral highlighted in their written statement that P.M. Diesels had not used the mark for centrifugal pumps, they altered its position in the replication. It was then argued that diesel oil engines and centrifugal pumps are closely related products, sold in the same shops to the same customer base, namely farmers. This shift in P.M. Diesels’ stance, particularly regarding the use and reputation of the mark concerning centrifugal pumps, is entirely impermissible. Ld. Counsel places reliance on paragraphs 18 & 24 of Anand Constructions v. Ram Niwas31, underlining the inconsistency in P.M. Diesels’ claims. The judgment is cited to support the argument that while the replication forms part of the pleadings, the determination of the relief should be based solely on the allegations in the plaint, not those introduced in the replication. 
iii) He argues that the replication cannot serve as the foundation for P.M. Diesels to claim any relief. Pleadings are confined to the plaint and the written statement; therefore, even though the replication was allowed to be filed and may be considered a pleading, it cannot be used as the basis for claiming any relief.
iv) Thukral’s trade mark ‘FIELDMARSHAL’ has been recognized by various authorities, including the Trade Mark Office, the IPAB, the High Court, and the Supreme Court. This recognition comes in wake of the rejection of P.M. Diesels’ ten applications for the registration of the ‘FIELDMARSHAL’ mark in relation to centrifugal pumps. The foundation is the order passed by the Registrar of Trade Marks on 12th August, 1992, later affirmed by the IPAB on 11th February, 2005. It is these orders which have been challenged in the ten writ petitions, pending before this Court. Consequently, Thukral’s rights concerning the ‘FIELDMARSHAL’ mark for centrifugal pumps have been acknowledged by the Registrar of Trade Marks and the IPAB, which significantly impacts the present suit.
v) Ld. Counsel also submits that they have not contested P.M. Diesels’ trademark registrations for diesel oil engines and other products, given that Thukral has only used the mark for centrifugal pumps, not diesel oil engines. When P.M. Diesels applied for marks qua centrifugal pumps, Thukral opposed these applications. These oppositions were successful at the Trade Mark Registry and were further upheld by the erstwhile IPAB. The writ petitions filed by P.M. Diesels pertain to these specific proceedings, where Thukral opposed their trade mark applications for centrifugal pumps.
36. Insofar as the cancellation petition C.O. (COMM.IPD-TM) 667/2022 is concerned, the following are the submissions of Mr. Singh, ld. Counsel:
i) The first cancellation petition filed by P.M. Diesels was against M/s. Jain Industries, i.e., C.O. No. 9/1986, which was withdrawn by P.M. Diesels on 16th January, 1987 in the following terms:
“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 the petition. In view of this situation learned counsel for 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 Thakural Chemical Works etc. Let the statement of learned counsel for the petitioner be recorded.”

ii) Though, the Court had given liberty to P.M. Diesels to file a cancellation petition against Thukral on the same cause of action, P.M. Diesels sought to file a cancellation petition in January 1987 not on the same cause of action, but on the basis of non-use of the mark. This cancellation petition has been considered by the IPAB, which had dismissed the same on 27th October, 2004. The writ petition was filed challenging the said order in which the ld. Division Bench had set aside the IPAB’s order on 18th January, 2006. However, in the SLP filed challenging the ld. Division Bench order, the Supreme Court on 18th December, 2008 set aside the ld. Division Bench’s order and held that only the ground of non-use of Thukral’s mark is permitted as the term used in the statute is ‘proprietor thereof for the time being’ under Section 46(1)(b) of the 1958 Act.
iii) Insofar as the plea of trafficking is concerned, M/s. Jain Industries was not impleaded in the cancellation petition, and hence the Supreme Court had remanded the matter. P.M. Diesels then sought impleadment of M/s. Jain Industries, which was rejected by the IPAB on 27th January, 2011 as the trial in the cancellation petition was over. This order of the IPAB rejecting the application for impleadment of M/s. Jain Industries was also challenged by P.M. Diesels by way of writ petition in W.P.(C) 4846/2011 which was dismissed on 9th October, 2020. Thus, as on date, the cancellation petition is being heard only against Thukral and not against M/s. Jain Industries. The primary ground is of non-use under Section 46(1)(b) of the 1958 Act, though, there is a tangential plea of likelihood of confusion.
37. In the plaint, the pleading is one of passing off based on prior user, goodwill and reputation, however, the plea of cognate and allied goods is now being raised in the present suit. It is further submitted that on the date when M/s. Jain Industries adopted the mark ‘FIELDMARSHAL’ for centrifugal pumps, P.M. Diesels had no user for centrifugal pumps, which is clear from the replication. The earliest registration in favour of P.M. Diesels’ is the trade mark bearing no. 224879 for the word ‘FIELDMARSHAL’ in class 7 dated 16th October, 1964. On the other hand, Thukral’s trade mark bearing no. 228867 in class 7 is dated 13th May, 1965. Thukral claims user of their mark since January, 1963, whereas P.M. Diesels claims user since May, 1963.
38. Further, the Supreme Court in M/s. Thukral Mechanical Works v. P.M. Diesels Pvt. Ltd.32, observed at paragraph 25 that P.M. Diesels and Thukral were infringers of the mark of M/s. Jain Industries. Since there was no goodwill on the date of Thukral’s adoption in terms of the judgment in Toyota Jidosha Kabushiki Kaisha v. M/s. Prius Auto Industries Limited33, no injunction can be granted in the present case.
39. In respect of the suit filed by P.M. Diesels being CS (OS) 2408/1985, the three-fold argument is:
i) That there is no prior user, goodwill or reputation in favour of P.M. Diesels on the date of Thukral’s adoption of the mark ‘FIELDMARSHAL’. Cognate and allied was not pleaded in the original plaint.
ii) Goods manufactured by P.M. Diesels and Thukral are different.
iii) Even otherwise, without prejudice, diesel oil engines and centrifugal pumps are not cognate and allied goods.
40. Ld. Counsel’s first submission is that the relevant date in the suits is 13th May, 1965, which is when Thukral’s registration of the ‘FIELDMARSHAL’ mark for flour mills, circulating and centrifugal pumps, couplings for machines, pulleys, and parts of machines included in class 7 was registered. In that registration, Thukral Mechanical Works claims use dating back to January 196334. Therefore, to succeed in its action for passing off, P.M. Diesels must demonstrate that, as of 13th May, 1965, it had established a reputation and market use for the ‘FIELDMARSHAL’ mark.
41. On the other hand, P.M. Diesels’ application was filed on 16th October, 1964, with a claim of use since 1963 in respect of diesel oil engines (not for land vehicles) and parts thereof included in class 7. Apart from the entries in the Trade Mark Journals, the documents relied upon by P.M. Diesels include three invoices from 1963, in the Gujarati language35, which, according to Mr. Hemant Singh, ld. Counsel, are not admissible and have not been proven in accordance with the law.
42. According to ld. Counsel, beyond these three invoices, statements of sales and advertising expenditures have been filed by P.M. Diesels, but were exhibited in CS (COMM) 473/2016, not in the 1985 suit filed by P.M. Diesels36. He, thus, argues that the evidence is scant and fails to establish any goodwill as of 1965, when Thukral’s mark was adopted and applied for by Thukral’s predecessor. Moreover, P.M. Diesels’ sales figures have not been legally substantiated.
43. He further submits that, according to P.M. Diesels, their claim is that Thukral’s predecessor – M/s. Jain Industries never used the mark until 1988. However, P.M. Diesels did not choose to implead M/s. Jain Industries in the suit. Additionally, P.M. Diesels opted not to examine Mr. Kailash Chand Jain, who, although summoned, was not cross-examined and was discharged, as recorded vide order dated 7th February, 1996. Consequently, P.M. Diesels has not proven that M/s. Jain Industries did not use the mark prior to 1988, and an adverse inference could be drawn against them.
44. Regarding the three invoices from 1963 filed by P.M. Diesels, PW-2 testified about these invoices37. However, this witness was only 8 years old in 1963. Furthermore, only carbon copies of these invoices were produced, which should be considered secondary evidence rather than primary evidence. Thukral has also objected to the method of proving these invoices and their admissibility. Witnesses are needed to attest to the authenticity and validity of these invoices, especially in light of allegations of fabrication.
45. Insofar as the statement of sales and advertisement expenditure is concerned in the suit filed by P.M. Diesels, no witness exhibited these documents and it is only suit filed by Ms. Sumita Rani in 1992 that an attempt was made to exhibit these documents, which also have not been proved in accordance with law. Thus, the submission is that user of 1963 i.e., prior to 1965 has not been proved by P.M. Diesels, and the onus has also not been discharged.
46. P.M. Diesels has not made any submissions in respect of infringement of trade mark ‘FIELDMARSHAL’ or in respect of the writs filed by them, from the orders denying registration to P.M. Diesels.
47. According to Mr. Singh, ld. Counsel, the core issue to be decided in the present suits relates to passing off, given that the plaint avers that P.M. Diesels has been using the ‘FIELDMARSHAL’ mark for diesel engines and centrifugal pumps. However, the argument for passing off does not hinge on the assertion that centrifugal pumps and diesel engines are related or allied goods, a claim that is conspicuously absent from the plaint.
48. Furthermore, regarding the opposition proceedings before the Registrar of Trade Marks, P.M. Diesels has not submitted any evidence. Any existing evidence must be evaluated to determine whether there has been any use of the ‘FIELDMARSHAL’ mark for centrifugal pumps.
49. Additional propositions canvassed by Mr. Hemant Singh, ld. Counsel are:
i) That P.M. Diesels failed to prove goodwill and reputation of the mark ‘FIELDMARSHAL’ qua them as of 13th May, 1965 which is the date when the predecessor of Thukral Mechanical Works applied for the registration of the mark. If there is no goodwill and reputation, the case of passing off would not be maintainable. Further, there is no title enjoyed by P.M. Diesels in the mark ‘FIELDMARSHAL’ as of 1965 (on a query from the Court, Mr. Singh clarified that there is no document by the predecessor of Thukral Mechanical Works except the trademark application). Reliance is place on the judgment of the Supreme Court in Toyota Jishoda (supra).
ii) The claimed prior use in 1963 for diesel oil engines is not convincingly established, as the only evidence presented by P.M. Diesels consists of two advertising invoices and three sales invoices for six engines. It remains unclear who issued these invoices, who signed the bills, and who the purchasing customers were. P.M. Diesels has not proven the actual issuance of these invoices. At best, this evidence could indicate sporadic rather than continuous commercial use, insufficient to establish goodwill and reputation. Additionally, the filed invoices could, at best, be considered hearsay evidence, not adhering to the principles of the Evidence Act, 1872 due to the absence of corroborative evidence demonstrating P.M. Diesels’ use of the mark.
iii) Thukral Mechanical Works’ actual use is of 1978, which is based on the following documents:
* Ex. P-1 to P-1338: A letter/invoice from Thukral to Marshal Machinery Sales which uses the mark ‘FM’, which establishes ‘FIELDMARSHAL’, dated 28th August, 1978.
* Ex.- DW-1/539: This is a telegram issued by Mr. Ram Chand Aneja, father of Mr. K.C. Aneja (PW-3), who is the authorised signatory of P.M. Diesels dated 27th April, 1979, where six pumps ‘FIELDMARSHAL’ has been mentioned. 
* Ex.- PW- 3/3 to Ex. PW – 3/540: Letter dated 15th January, 1981 letter from M/s. Yogesh Machinery Stores to Thukral Mechanical Works. 
* Ex. PW- 3/3 to Ex. PW – 3/541: The letter dated 2nd March 1981, sent from M/s. Yogesh Machinery Stores to Thukral, hints at the continuous supply of pumps. This was also acknowledged by Mr. K.C. Aneja, who appeared as PW-3 on behalf of P.M. Diesels.
* Ex. PW- 2/1742: Reliance is also placed on a notice dated 19th May, 1992 issued by Field Marshal Agencies, a dealer of P.M. Diesels in Kanpur, which warns that counterfeit centrifugal pumps are being sold in the market. The notice clarifies that P.M. Diesels does not produce centrifugal pumps at all, concluding that any pumps marketed under the ‘FIELDMARSHAL’ brand originating from Sirhind, Punjab, and Mujjafarpur are not manufactured by P.M. Diesels.
* Ex. PW- 2/2443: In the legal notice dated 22nd June, 1982, P.M. Diesels argued that they became aware of Thukral’s use of the ‘FIELDMARSHAL’ mark only upon encountering trade mark application no. 363764 in class 7. However, evidence presented by P.M. Diesels revealed that Mr. K.C. Aneja, their authorized signatory, was actually aware of the documents referenced and relied upon by Thukral and knew of Thukral’s use of the ‘FIELDMARSHAL’ mark for centrifugal pumps since 1980-81. This suggests, according to Mr. Hemant Singh, ld. Counsel, that P.M. Diesels’ claim is based on inaccuracies. This contrasts with the cause of action stated in the plaint, which claims P.M. Diesels only became aware of Thukral’s trade mark application at the time of its discovery. [Mr. R.C. Aneja, the father, had two sons, Mr. R.D. Aneja and Mr. K.C. Aneja. Mr. R.D. Aneja managed Marshal Machinery and testified as PW-5 in the suit. Mr. K.C. Aneja managed ‘Yogesh Machinery’ and was the General Manager of P.M. Diesels as well as their dealer in Haryana. Mr. R.C. Aneja also served as a dealer for P.M. Diesels in Haryana.]
iv) Mr. K.C. Aneja, who was P.M. Diesels’ agent and dealer as well as the power of attorney holder, had been purchasing centrifugal pumps from Thukral Mechanical Works since 1978. He appeared as PW-3 in the suit and admitted this during his cross-examination. Pleadings to the contrary, asserting that P.M. Diesels’ acquired knowledge from the trade mark application of Thukral Mechanical Works, are clearly false. Therefore, in law, there is acquiescence by P.M. Diesels regarding Thukral’s use of the mark ‘FIELDMARSHAL’ for centrifugal pumps. Beyond acquiescence, there has also been active encouragement of Thukral by P.M. Diesels’ own agents and dealers. Thus, P.M. Diesels cannot claim ignorance of the said position. Reliance is placed on S.P. Chengalvaraya Naidu v. Jagannath44 that a plaint or a suit which is based on a falsity cannot be condoned and the Plaintiff is therefore not entitled to any relief.
50. Based on the above documents produced, Mr. Hemant Singh, ld. Counsel made the following further submissions:
i) Whether P.M. Diesels established goodwill and reputation prior to the cut-off date.
* Thukral Mechanical Works acquired rights in the ‘FIELDMARSHAL’ mark as of 13th May, 1965, by virtue of the assignment dated 30th May, 1986, which was accompanied with the goodwill of the business. The invoices filed since 1963 do not clarify how sales were conducted. Moreover, the witness who testified had no personal knowledge of these invoices. Thukral’s trade mark registration sufficiently establishes the adoption of the mark, even without evidence of use in 1965. P.M. Diesels must prove its own goodwill prior to 1965 to secure an injunction. Such goodwill ought to be significant enough to associate reputation with the plaintiff for the ‘FIELDMARSHAL’ brand. The statutory rights of Thukral Mechanical Works, as a registered proprietor, can only be challenged with evidence of consistent commercial use, not sporadic instances. Moreover, the suit is based on user of the mark for ‘engines’. In fact, in the notice given to the dealers, P.M. Diesels clearly admits that there is no user of the mark ‘FIELDMARSHAL’ for ‘centrifugal pumps’ in terms of Ex.- PW-1/1245.
* Secondly, the plaint, on the other hand, is based on falsehood that P.M. Diesels is using the mark for ‘centrifugal pumps’. The fact is that M/s. Nitin Machine Tools was making centrifugal pumps. The only evidence for pumps is PW-1- J.R. Vekaria, who relies on five invoices for the period May to October, 1975. When the witness was asked to produce all the records, he failed to do so. Thus, there is no use of the mark for centrifugal pumps and the use by P.M. Diesels is limited to diesel engines. Insofar as the plea of cognate and allied good is concerned, the same is not even being pleaded in the plaint and has been raised for the first time in the replication and thus cannot be argued. 
* The crucial question is whether P.M. Diesels had established rights over the mark ‘FIELDMARSHAL’ even for diesel engines. The answer is no.
* The Legal Proceedings Certificate dated 2nd May, 2002, as well as the Assignment Deed dated 30th May, 1986, clearly indicate that Thukral Mechanical Works is recorded as the subsequent user of the mark. There is also a clear admission that the assignee of the mark had satisfied itself of Thukral Mechanical Works’ use of the mark ‘FIELDMARSHAL’ for centrifugal pumps since 1973. Under these circumstances, Thukral’s statutory rights must prevail over P.M. Diesels’ alleged common law rights.
* It is further submitted that insofar as the sales figures are concerned, an attempt was made to prove the same in the suit filed by P.M. Diesels, which it was unable to do. Insofar as Thukral’s suit is concerned, the evidence would show that DW-1-Mr. Nitin Patel, who deposed in respect of the sales figures which are produced as PW-1/746 and PW1/847, and his cross examination48, establish beyond any doubt that he had no knowledge of the books of accounts.
* Section 60 of the Indian Evidence Act, 1872 is relied upon for the proposition that a single sheet of paper cannot be the basis of sales figures relied upon to prove goodwill and reputation as they lack veracity. The following decisions are also relied upon by Thukral:
– Kalyan Kumar Gogoi v. Ashutosh Agnihotri49.
– ITC v. Nestle50.
* Insofar as the proposition that the goodwill and reputation has to be established on the date of adoption by Thukral is concerned, the following decisions are relied upon:-
– Toyoto Jidosha (supra)
– Dhariwal Industries Ltd. v. M.S.S. Food Products51
– Pioneer Nuts and Bolts Pvt. Ltd. v. M/s.Goodwill Enterprises52
– Bimal Govindji Shah Trading as Acme Industries v. Panna Lal Chandu Lal53
– Intex Technologies (India) Ltd. v. M/s. A Z Tech (India)54
Thus, it is argued that even in respect of all evidence, P.M. Diesels has failed to prove goodwill reputation in respect of centrifugal pumps.
ii) Whether the goods are cognate and allied goods.
* ‘FIELDMARSHAL’ is being used by P.M. Diesels for centrifugal pumps, which is untrue. P.M. Diesels’ case is that it is also registered for diesel engines and therefore the use of the mark for centrifugal pumps by Thukral Mechan