Use Of Identical Mark By Subsequent Registered Proprietor Is Passing-Off



LexOrbis is a premier full-service IP law firm with 270 personnel including 130+ attorneys at its three offices in India namely, New Delhi, Bangalore and Mumbai. The firm provides business oriented and cost-effective solutions for protection, enforcement, transaction, and commercialization of all forms of intellectual property in India and globally. The Firm has been consistently ranked amongst the Top- 5 IP firms in India for over the past one decade and is well-known for managing global patent, designs and trademark portfolios of many technology companies and brand owners.
Recently, the Delhi High Court disposed of two civil suits, one rectification petition and 10 writ petitions against the trademark registrations filed by PM Diesels...
India Intellectual Property
To print this article, all you need is to be registered or login on

Recently, the Delhi High Court disposed of two civil suits, one rectification petition and 10 writ petitions against the trademark registrations filed by PM Diesels for registering the mark FIELDMARSHAL in 10 Indian languages. In a dispute that had been simmering for the past 40 years, the earliest suit filed with respect to the disputed trademark "FIELDMARSHAL" was instituted vide suit no. 2408/1985 titled M/s P M Diesels Pvt Ltd vs M/s Thukral Mechanical Works. Thereafter, cross-suits were filed, and multiple proceedings were initiated over the years to claim ownership of the trademark FIELDMARSHAL.


The earliest registration of the word mark FIELDMARSHAL in favour of the plaintiff is vide Registration no. 224879 dated 16th October 1964. P M Diesels claims continuous use since May 1963. In 1982, the Plaintiff company M/s P M Diesels Pvt Ltd had filed for registration of the trademark FIELDMARSHAL as a word mark, a logo containing the alphabets FM and as a stylised mark which was duly advertised in the trademark journal in May 1982 mentioning description of goods as Diesel engines not used in land vehicles and parts thereof, including electric motors and pumps included in class 7 and claimed continuous use since 1965. The plaintiff furnished numerous documents to substantiate these claims.

The plaintiff learned of using the mark FIELDMARSHAL in 1982 and sent a cease-and-desist notice to the defendant. However, as the defendant continued to use the mark, the plaintiff eventually instituted suit no. 2408/1985 titled M/s P M Diesels Pvt Ltd vs M/s Thukral Mechanical Works against the defendant to assert their right over the mark FIELDMARSHAL.

In the meantime, the defendant vide Assignment deed dated 30th May 1986 obtained the mark FIELDMARSHAL, which was earlier registered by M/s Jain Industries on 13th May 1965 with a user claim since January 1963, i.e. prior to the date of use claimed by PM Diesels. Based on this assignment, the name of Thukral Mechanical Works was recorded as the lawful owner of the mark FIELDMARSHAL in the records of the Trademark Registry and was upheld by the Registrar of Trademarks, the courts and IPAB in subsequent proceedings over the years. The plaintiff moved a cancellation petition to remove the defendant's marks on the grounds that the defendant cannot prove the use of the mark since 1963 while the plaintiff has evidence to demonstrate continuous use. The mark FIELDMARSHAL may have been registered by Jain Industries but was not used, and the company was defunct. The purchase of the mark by the defendant was motivated by the intent to claim the use of FIELDMARSHAL to benefit from the goodwill and reputation that the mark had in the market by the continuous efforts of the plaintiff since 1963. The plaintiff was aggrieved when the defendant also opposed the applications for registration of FIELDMARSHAL in Indian languages.

Analysis of the Case

All the above writ petitions, civil suits, and rectification petition were disposed of by the Delhi High Court by order dated 2nd April 2024 to resolve the long-standing dispute between the parties. The learned Judge examined all the evidence on record and summarised the stand of the parties in her judgement to clarify that while the defendant had purchased the mark from the erstwhile registered owner, Jain Industries, in effect, the defendant had failed to establish continuous use of the mark FIELDMARSHAL before 1988.

On the contrary, the evidence on record clearly shows the use of the mark by the plaintiff since the 1960s. Numerous extracts of advertisements from leading newspapers in regional languages and invoices from different dealers, manufacturers, distributors, etc, established extensive continuous use of the mark by the plaintiff concerning centrifugal pumps and diesel engines. Thus, the argument given by the defendant that the plaintiff's use of the mark FIELDMARSHAL is limited only to diesel engines does not stand scrutiny.

Further, the defendant has admitted that they have no documentary evidence to substantiate the use of the mark by their predecessor in interest, M/s Jain Industries, who were primarily a dal and flour mill and not into the manufacture or sale of centrifugal pumps. The name FIELDMARSHAL is mentioned only at the base of one flour mill machine and does not suggest that the machine itself was being sold. The evidence on record also suggests that while the defendant was selling centrifugal pumps, the use of the name FIELDMARSHAL was not found on any documents before the 1980s that show names such as Varun, BMS or DPF, which was also substantiated by dealers, distributors and agents operating in the market.

The plaintiff learned of the alleged existence of duplicate centrifugal pumps under their brand name in the early 1980s and initiated requisite legal action. As such, despite some unsubstantiated claims by both parties, the plaintiff cannot be said to have acquiesced to a willingness to co-exist with the defendant. Moreover, after the plaintiff filed the case to stop passing off duplicate FIELDMARSHAL centrifugal pumps, the defendant approached the proprietors of M/s Jain Industries in 1986 which was defunct and purchased the trademark as per the assignment deed dated 30th May 1986. Since the mark was not being used by Jain Industries, the argument of continuous use cannot be accepted.

The plaintiff has successfully established consistent prior use of the mark with substantial exports to countries like Sudan, Iraq, Iran, Syria, Thailand, West Germany, etc., as well as domestic sales, as evidenced by the statements of accounts and advertisements in several languages, such as Tamil, Telugu, Urdu, Punjabi, Bengali, and English, in addition to brochures from the 1970s depicting FIELDMARSHAL centrifugal pumps.

Since the initial suit filed by the plaintiff was for passing off, the concept of cognate and allied goods is ingrained in it, even if the words are not expressly mentioned. The farmer who purchases the FIELDMARSHAL brand of diesel engine and centrifugal pumps is likely to assume the submersible pump or other allied goods are also manufactured by PM Diesel since not just the class of products, but the trade channels and the end user are also identical.

Moreover, the learned single Judge also took note of the fact that the defendant had filed an application for registration of the mark FIELDMARSHAL in 1983 for centrifugal pumps, which they eventually withdrew in 1987 as they could not furnish sufficient documentary evidence of use and the mark was being opposed by the plaintiff.

Thus, having pursued the matter for 40 years, the plaintiff can in no way be said to be guilty of delay, laches, or acquiescence as it has diligently pursued several legal proceedings that include oppositions, rectifications, cancellation petitions, suits for passing off, writ petitions, etc.

Moreover, mere registration of the mark by Jain Industries without use does not create goodwill in their favour. The goodwill is generated by extensive continuous use, as demonstrated by the plaintiff. Reliance was placed on the decision of the Supreme Court in N.R. Dongre vs Whirlpool (1996) 5 SCC 714 andNeon Laboratories vs Medical Technologies Ltd (2015) 10 SCR 684, wherein it was held that the use of an identical mark by a subsequent registered proprietor would still constitute passing off. The adoption of the mark FIELDMARSHAL by the defendant is, therefore, not honest concurrent use, and in fact, the timing of the assignment of the mark by Jain Industries itself creates doubt regarding the intention of the defendant.

Decision of the Court

Based on the foregoing analysis, a permanent injunction was granted against the defendant for using the mark FIELDMARSHAL, and the cross-suit filed by the defendant was dismissed. The registration of the mark FIELDMARSHAL bearing no. 228867 dated 13th May 1965 in class 7, which the defendant has obtained by assignment from Jain Industries, was ordered to be cancelled and removed from the register of trademarks. All the ten writ petitions filed by PM Diesel against the defendant for registering their mark in regional languages were also allowed, with instructions from the trademark registry to issue registration certificates to the plaintiff within one month of the date of the order. The court also recognised the substantial cost incurred by the plaintiff in this prolonged legal battle and granted the actual cost of litigation to be paid to the plaintiff by the defendant.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

See More Popular Content From

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More