M.L. Pendse, J. - (1.) The appellants are engaged in the business of manufacturing and marketing diesel oil engines and parts thereof (not for land vehicles), electric motors, mono block centrifugal pumps etc. In respect of the said business, the trade mark consisted of the words 'FIELD MARSHALL' perse was registered on October 16, 1964. The trade mark consisted of the words 'Field MARSHAL' in peculiar lettering style was registered on October 4,1968 and so also the logo mark on the same date. The marks were registered in respect of diesel oil engines and parts thereof included in Class 7. The appellants claimed that the goods manufactured by them are sold all over India and the turnover has increased from Rs. 62,126/- in the year 1963 to Rs. 9, 33, 24, 396/- in the year 1981-82. The respondents got their mark 'FRIEND MARSHALL' registered on June 27, 1978 in respect of the same goods in Class 7 as that of the appellants. Before registration of the mark of the respondents, the mark was advertised in the trade journal but neither the appellants nor any other party filed opposition to the registration of the mark. The respondents claimed that they were using the mark from year 1975 and their goods were sold all over the country. It is not in dispute that the diesel engines are manufactured both by the appellants and respondents in their factories at Rajkot in State of Gujarat.
(2.) On June 3, 1982, the appellants instituted application under sections 46 and 56(2) of Trade and Merchandise Marks Act, 1958 for rectification of registered trade mark No.337854 of the respondents. The appellants claimed that the mark 'FRIEND MARSHALL' was registered without sufficient cause and was wrongly remained on the register. The appellants claimed that the mark of the respondents is causing confusion and deception in the mind of the customers of diesel engines. The appellants also claimed that the respondents secured registration of the mark dishonestly and on a false claim that the mark was used from year 1975. The appellants claimed that registration was in violation of provisions of section 11 of the Trade and Merchandise Marks Act, 1958 and the respondents are trading on the reputation earned by the appellants by use of their registered mark 'FIELD MARSHALL'. The Application was resisted by the respondents by claiming that the appellants are not the persons aggrieved and consequently the application was not maintainable. The respondent., also claimed that the mark was in use from year 1975 and the goods were sold all over the country and there is not a single complaint of deception and confusion among the members of the trading community. The respondents claimed teat the identical marks with the word 'MARSHALL' are registered and in support of the claim, pointed out the marks like'Hind Marshal"Air Marshal', 'Indira lvlarshal' Field Marshal, etc. ON MONDAY, JANUARY 24,1994:
(3.) The Deputy Registrar of Trade Marks by order dated January 19, 1988 declined the reliefs sought by application for rectification of mark of the respondents. The Deputy Registrar held that the two m arks are not identical but the respondents are copying it in stylish way in which the mark was used by the appellants. The Deputy Registrar held that the respondents are copying the stylish form of the appellants, but it may not be with the intention to cash on the reputation of the mark of the appellants. The Deputy Registrar further held that the possibility of confusion can be avoided if the respondents are directed to ensure that the mark 'FRIEND MARSHALL' is used only in the way and style it was registered and not in the special stylish manner registered by the appellants. The decision of Deputy Registrar of Trade Marks was challenged by the appellants by filing appeal and which was numbered as Miscellaneous Petition N.21 of 1988. The learned Single Judge by judgment dated April 13, 1992 dismissed the appeal concurring with the finding recorded by the Deputy Registrar of Trade Marks. The order of the learned Single Judge's under challenge.;