S. Jagadeesan, Chairman - (1.) 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:- JUDGEMENT_52_TLIP0_20040.htm 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.
(2.) 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 infringers 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.
(3.) 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.;