Litigation in Intellectual Property although conforms to the
general practices and procedures of civil litigation, the
determinants of objections raised under the Procedural Code many a
times lie in the intricacies associated with the facts governing
the existence of intellectual property. In a suit dealing with
admissibility of a Plaint filed under Order VII of the Civil
Procedure Code, 1908 P.M. Diesel Ltd. v. Patel Field Marshall
Industries [IA Nos.2381/2000, 7387/1999, 13850/2006 in CS (OS)
1612/1989] heard at the Delhi High Court witnessed such a
The trade mark "FIELD MARSHALL" associated with Patel
Field Marshal Agencies as well as Patel Field Marshal Industries
was used with respect to the marketing of their goods of the same
kind and description, as those of the P.M. Diesel. The mark is used
in relation manufacture, export and marketing of diesel oil
engines, centrifugal pumps, electric motors and their component
parts in which the parties are engaged.
P.M. Diesel claimed to have been using the mark from the year
1963 in all its trade literature, bill books, pamphlets, stickers,
etc. They also rendered their turnover and expenditure with respect
to the same and stated that a great deal of reputation and goodwill
built over these years owing to the continuous and extensive use of
the mark. They alleged Patel Field Marshall to be conducting their
business from the same premises and to have common partners. They
also averred that the co-party of Patel Field Marshall was the
distributor of its goods between 1965 and 1970, when the latter
only sold goods manufactured by P.M. Diesel and during which time
it had adopted the mark "Patel Field Marshal
P.M. Diesel stated that in the year 1982, and subsequently in
1983 it learnt that 'Patel Field Marshal Industries' and
'Patel Field Marshal Agencies' had been applied for
registration . They averred P.M. Diesel had asked then to desist
using the marks and withdraw the applications and that the same had
not been adhered to. They claimed to have initiated opposition
proceedings and that the same stood pending at the time this suit
was being heard. They further learnt that in June 1989, that
partners of Patel Field Marshall were planning to incorporate a
company, whose trading style contained the phrase "Field
Marshall", which they proposed would carry out similar to that
of P.M. Diesel. In this pursuance, P.M. Diesel issued caution
notices in newspapers and also wrote to the Registrar of Companies,
Ahmedabad raising an objection to the incorporation of the company.
They also claimed that Patel Marshall was aware as to the
pre-existing proprietor of "Field Marshall" and that
their act was to dishonestly and unlawfully appropriate the
goodwill appended to the mark. On learning of such incorporation,
the cause of action to file the suit arose, invoking relevant
provisions of the Trademarks Act alongside S. 62 (2) of the
Copyright Act, 1957.
The Court Referring to leading cases including M/s Dhodha
House vs. S.K. Maingi with M/s P. M. Diesels Ltd vs. M/s Patel
Field Marshall Industries and Ors AIR 2006 SC 730, also laid
due consideration to the earlier orders. As under Order VII Rule 11
counsel for P.M. Diesel sought to object to its maintainability,
urging that the question of jurisdiction could not be gone into
under that particular provision. However, during the course of
hearing, it was agreed by Patel Field Marshall that the application
could be treated as one under Order VII Rule 10, and arguments of
parties, be heard on that basis.
The counsel for P.M. Diesel further urged that the plaint did
not disclose any part of the cause of action neither accrued in
favour of the plaintiff within the territorial limits of this
court's jurisdiction. They stated their place of business to be
entirely outside the jurisdiction of the present court. A plethora
of judgments were relied on and the Counsel submitted that despite
voluminous documentary evidence, there was no material to connect
any sale of the Patel Field Marshall's product.
The counsel for P.M. Diesel urged in reply that the court while
deciding the present application, should not look into the merits,
or consider the effect of various documents filed by the parties.
They stated that the scope of inquiry should be limited to whether
the plaint discloses any cause of action, which occasions the
filing of the suit, and whether such cause of action, in terms of
the averment, are prima facie, within jurisdiction of this court.
They urged that adoption of any other approach would, in the
submission of the counsel, be contrary to well established
principles, and amount to prejudging the merits of the case.
The Court deduced in consideration of the various factors that
the suit deserved to be returned and P.M. Diesel was ordered to
bear costs amounting to a sum of Rs. 30,000.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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