The Delhi High Court recently disposed of one of the oldest intellectual property disputes pending before it [M/s PM Diesels P Ltd v M/s Thukral Mechanical Works].
Justice Prathiba M Singh passed the order nearly 40 years after PM Diesels Private Limited filed the suit against a firm named Thukral Mechanical Works to restrain the latter from using the trademark “FIELDMARSHAL”.
The Court granted relief to PM Diesels, noting that the battle between PM Diesels and Thukral Mechanical Works has been a long-drawn battle spanning over 40 years and substantial costs have been incurred by PM Diesels to protect the mark ‘FIELDMARSHAL’ and to defend itself against the various proceedings filed by Thukral.
“This litigation has not only imposed substantial financial burden on PM Diesels in its efforts to protect the ‘FIELDMARSHAL’ mark but has also engaged this Court’s resources considerably. More than 20 hearings at the final arguments stage have been spent by this Court to resolve the complex set of issues arising between the parties.”
Therefore, Justice Singh passed a decree of actual costs.
“The taxation officer shall quantify the costs. Let the bill of costs in terms of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018 read with IPD Rules, be filed within four weeks,” the Court directed.
PM Diesels moved the Court in the year 1985 seeking injunction against the use of the mark ‘FIELDMARSHAL’ or any other mark deceptively similar to it.
It also sought an injunction restraining Thukral from passing off diesel oil engines, and parts such as pumps and electric motors under the mark ‘FIELDMARSHAL’.
Subsequently, twelve other cases came to be filed in the Court over the same trademark, cancellation of the mark as well as those challenging the orders of the Intellectual Property Appellate Board (IPAB).
The dispute traversed the Delhi High Court, the Karkardooma district court as well as IPAB over the last four decades.
On April 2, 2024, after considering the cases, Justice Singh ruled in favour of PM Diesels and said that Thukral will no longer be able to manufacture products under the mark ‘FIELDMARSHAL’.
"In view of the fact that Thukral Mechanical Works has been using the mark ‘FIELDMARSHAL’ for centrifugal pumps and other products, during the pendency of the suit, Thukral Mechanical Works is given a period of six months to exhaust its stock. However, no fresh manufacturing shall be made by Thukral Mechanical Works under the mark ‘FIELDMARSHAL’,” the Court ordered.
The Court arrived at the following conclusions:
Advocates N Mahabir, Noopur Biswas PC Arya appeared for PM Diesels.
Advocates Hemant Singh, Sachin Gupta, Ajay Kumar, Yashi Agrawal, Swati Meena, Gaurangi Sharma and Rohit Pradhan represented Thukral Mechanical Works.
Central Government Standing Counsel (CGSC) Harish V Shankar along with advocates Srish Kumar Mishra, Sagar Mehlawat and Alexander Mathai Paikaday represented the Controller General of Patents, Designs and Trademarks.
[Read Judgment]