On 9th October 2020, a Single Judge Bench of Hon’ble Justice Vibhu Bakhru heard the case of P.M. Diesels Pvt Ltd v. Thukral Mechanical Works and Ors.
The petitioner had filed the present writ petition impugning an order passed by the Intellectual Property Appellate Board (IPAB) whereby the application filed by the petitioner to implead M/s Jain Industries as a respondent to the rectification petition filed by it, was rejected.
Facts of the Case
The petitioner is a company incorporated under the Companies Act, 1956 and claimed that it was engaged in the business of manufacturing, marketing and exporting diesel oil engines and its parts since 1963. The petitioner claimed that it adopted the trademark ‘Fieldmarshal’ for its products. The petitioner further started manufacturing and selling monoblock pumps and motors including centrifugal pumps and their parts under the said trademark in or around 1973.
Thukral Mechanical Works Ltd is a company registered under the Companies Act, 1956 and is also engaged in a similar business. In 1985, the petitioner filed a suit against Thukral alleging infringement and passing off and praying for a decree of perpetual injunction restraining Thukral from using the trademark ‘Fieldmarshal’ or any other mark or tradename similar to it. The Court passed an ex parte ad interim injunction against Thukral, restraining it from using the said mark.
Contentions of the Petitioner
Mr Agarwal, learned counsel appearing for the petitioner, contended that the IPAB had erred in proceedings on the basis that the decision of the Supreme Court restricted the discretion of IPAB to implead M/s Jain Industries to decide the issue of a non-user in accordance with the law.
He further submitted that the petitioner could not be faulted for not impleading M/s Jain Industries in the first instance as the Supreme Court had in its decision, for the first time, observed that where an allegation of trafficking was made, both the original registrant as well as assignee are required to be impleaded as a party.
Mr Chander Lall, the learned senior counsel who also appeared for the petitioner, contended that the import of the said order directing the IPAB to consider afresh in terms of the principles laid down in the said decision would also be to consider impleading such parties as are held to be necessary and proper in such proceedings.
The Court opined that the petitioner’s application for rectification of the trademark solely on the ground that M/s Jain Industries had not used the said trademark for a period of five years and one month after its registration was not sustainable. The observations made by the Supreme Court that a petition for rectification of registration on account of or non-use by the assignor would not be maintainable without impleading the assignor was in the context where the petitioner also challenged the assignment as being mala fide and with the view to frustrate the provisions of Section 46(1)(b) of the Act.
The Court found no reason to interfere with the impugned order and thus the petition was dismissed.
The petitioner’s contention that it had become necessary to implead M/s Jain Industries, only on account of the decision rendered by the Supreme Court in the matter, was erroneous as the observations made by the Supreme Court were in the context of the petitioner’s ground regarding non-use of the trademark and the allegations that it had been fraudulently transferred.
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