The Delhi High Court recently passed order on a 40-year-old disputes related to intellectual property rights.
The order was passed by the single-judge Bench of Justice Pratibha M Singh in a suit filed by PM Diesels Private Limited against Thukral Mechanical Works, restraining the latter from using the trademark ‘Fieldmarshal’.
The High Court noted that it has been a long-drawn battle spanning over 40 years, during which, PM Diesels incurred substantial costs to protect the mark ‘Fieldmarshal’ and to defend itself against the various proceedings filed by Thukral.
Apart from imposing substantial financial burden on PM Diesels in its efforts to protect the ‘Fieldmarshal’ mark, the litigation has also engaged this Court’s resources considerably.
The single-judge Bench further observed that 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.”l
Passing a decree of actual costs, the High Court said the taxation officer shall quantify the costs.
It directed that 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.
PM Diesels had filed a suit in 1985 seeking injunction against the use of the mark ‘Fieldmarshal’ or any other mark deceptively similar to it.
The petitioner further sought an injunction restraining Thukral from passing off diesel oil engines, and parts such as pumps and electric motors under the mark ‘Fieldmarshal’.
Subsequently, 12 other cases came to be filed in the Court over the same trademark, seeking cancellation of the mark as well as those challenging the orders of the Intellectual Property Appellate Board (IPAB).
In the past four decades, the case has traversed the Delhi High Court, the Karkardooma district court as well as IPAB over the last four decades.
The single-judge Bench held that Thukral will no longer be able to manufacture products under the mark ‘Fieldmarshal’.
Noting that Thukral Mechanical Works has been using the mark ‘Fieldmarshal’ for centrifugal pumps and other products, during the pendency of the suit, the High Court granted six months time to Thukral Mechanical Works to exhaust its stock.
The High Court further directed Thukral Mechanical Works not to manufacture any fresh product under the mark ‘Fieldmarshal’.