Case Note & Summary
The dispute arose between two parties regarding the trademark 'Field Marshal' for diesel engines and centrifugal pumps. The first respondent, P.M. Diesels Pvt. Ltd., was the registered proprietor of the trademark since 1964. The appellant, Thukral Mechanical Works, began using the mark for centrifugal pumps and claimed ownership through an assignment from Jain Industries, which had registered the mark for various goods. The first respondent filed a suit alleging infringement and sought a permanent injunction, leading to an ex parte order against the appellant. The appellant contended that it was the registered owner of the trademark following the assignment. The first respondent subsequently filed a rectification application under Section 46 of the Trade and Merchandise Marks Act, claiming non-use of the trademark by Jain Industries for over five years. The Assistant Registrar confirmed the appellant's registration, but the first respondent's application was dismissed by the Intellectual Property Appellate Board. The High Court later allowed the first respondent's writ petition, leading to the current appeal. The Supreme Court analyzed the statutory provisions, particularly the interpretation of non-use and the implications of trademark assignment. The court concluded that the non-use period must be continuous and that the assignment does not reset this period unless bona fide use is established. The appeal was allowed, and the Board was directed to reconsider the application based on the clarified legal principles.
Headnote
A) Trademark Law - Non-Use of Trademark - Interpretation of Section 46(1)(b) - Trade and Merchandise Marks Act, 1958, Section 46(1)(b) - The court examined the meaning of 'for the time being' in the context of non-use of a trademark and concluded that the non-use period must be continuous and can be attributed to the registered proprietor or their predecessor. The court held that the assignment of a trademark does not reset the non-use period unless the assignee can prove bona fide use (Paras 16-30).
Issue of Consideration
Whether the application under Section 46(1)(b) of the Trade and Merchandise Marks Act, 1958 was maintainable.
Final Decision
The Supreme Court allowed the appeal, set aside the order of the Board, and directed it to reconsider the application in light of the clarified legal principles regarding non-use and assignment of trademarks.
Law Points
- Trademark registration
- non-use
- bona fide use
- assignment of trademark
- rectification of register
