P M DIESELS PRIVATE LIMITED Vs. THUKRAL MECHANICAL WORKS

JUDGEMENT

(1.) This order will dispose of the plaintiff's application under Order 39, Rules I and 2 being IA 7329/85 and the defendant's application under Order 39, Rule 4 being IA 6624/86.

(2.) . The plaintiff has filed a suit, inter alia, praying for perpetual injunction restraining the defendants, their servants, agents etc. from manufacturing, selling or otherwise dealing in diesel oil engines and parts thereof, electric motors, agricultural pumps or centrifugal pumps or parts thereof bearing the trade mark "Field Marshal" or any other similar or identical trade mark. There is also a prayer for a perpetual injunction restraining the defendants, their agents etc. from passing off diesel oil engines and parts thereof such as pumps and electric motors under the trade mark "Field Marshal". It is alleged in the plaint that since the year 1963 the plaintiff company has been carrying on the business of manufacturing, marketing and exporting of diesel oil engines and parts thereof not for land vehicles), centrifugal pumps, electric motors and parts thereof. It is also alleged that the trade mark "Field Marshal" has been registered under the provisions of the Irade and Merchandise Marks Act 1958. The registration number and the clause under which it has been registered has been indicated in the plaint. It is further alleged that the defendants have started manufacturing and marketing agricultural pumps or centrifugal pumps which are identical or deceptively similar to the trade mark "Field Marshal" and the adoption of the trade mark "Field Marshal" by the defendants amounts to infringement of the plaintiff's well known and registered trade mark "Field Marshal". On the averments so made in the plaint an ex parte injunction was issued on 19th December, 1985 restraining the defendants from manufacturing or selling either themselves or through their dealers or representatives, 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. After notice was served and the defendants appeared on 8th April 1986 it was noted by this Court that the defendants have been manufacturing and selling centrifugal pumps for agricultural purposes which are allied to diesel oil engines having the impugned trade mark "Field Marshal" and are passing off of these goods as the goods of the plaintiff. It was further observed that the plaintiff appeared to have a good prima facie case with regard to the action of passing off. The prayer of the defendant to suspend the injunction was declined. The application, however, was not finally disposed of and the ex parte in- junction was continued till further orders.

(3.) . On behalf of the defendants, in the written statement which is filed, ii has been stated that the plaintiffs have not been manufacturing and selling centrifugal pumps for agricultural purposes. It is further contended that the plaintiffs do not have a registered trade mark of "Field Marsh al" in respect of centrifugal pumps. The delendants have claimed the use of the trade mark "Field Marshal" in respect of the centrifugal pumps since the year 1973. In the application under Order 39, Rule 4 being IA 6624/86 it is further contended that the defendantis the registered propritor of the trade mark "Field Marshal" in respect of the flour mills, circulating and centrifugal pumps, couplings for machines, pulleys and valves (parts of machines). Along with this application a copy of the entry relating to the Trade Mark Mo. 228867 has been filed which discloses that the trade mark "Field Marshal" was registred in respect of the aforesaid goods including the centrifugal pumps w.e.f. 30th May, 1965. It is further disclosed from this entry that this registration was in the name of Puran Chand Jain and Kailash hand Jain, trading as Jain Industries, Agra and by virtue of an agreement dated 30th May, 1986 this trade mark has been assigned to the defendants, and that the registration of this trade mark is renewed for the further period of seven years from 30th May, 1986. This change in the registration of the name of the proprietor was made pursuant to the order dated 24th October 1986 of the trademark authorities,underSection44of the said Act.