M/S. THUKRAL MECHANICAL WORKS versus P.M. DIESELS PVT. LTD. & ANR.

Citation: [2008] 17 S.C.R. 1161 · Decided: 18-12-2008 · Supreme Court of India · Bench: S.B. SINHA · Disposal: Appeal(s) allowed

Judgment (excerpt)

[2008] 17 S.C.R. 1161 
MIS. THUKRAL MECHANICAL WORKS 
A 
v. 
.. 
I-
P.M. DIESELS PVT. LTD. & ANR. 
(Civil Appeal No. 7404 of 2008) 
DECEMBER 18 2008 
[5.8. SINHA AND CYRIAC JOSEPH, JJ.] 
Trade and Merchandise Marks Act, 1958: 
Registered. owner of trade mark - Rights of - Held: 
Registration of trade mark confers a valuable right -
The c 
person in whose name the trade mark is registered may take 
action against any person for passing off the goods as that 
of the registered owner - It confers an exclusive right of use 
of the trade mark in relation to the; goods in which the trade 
mark is registered - The same is an assignable right in terms p 
of Section 36 of the Act, whereas an unregistered trade mark 
is not. 
s. 46 - Non us~r of mark - Consequences of- Held: Non 
"\ 
user of mark would disentitle registered proprietor from 
renewal of registration - s. 46 takes away valuable right of E 
registered proprietor - Registered proprietor of trade mark is 
not permitted to circumvent the law of user of the trade mark 
for a long time by assigning the same from time to time. 
s.46(1 )(b) - Assignment of trade mark - A/legation of 
trafficking - Original registrant/assignor not made party -
F 
Held: Whether the registered proprietor of the trade mark had 
.. 
taken recourse to trafficking or not must be determined in an 
appropriate proceeding - So long as the right to assign a 
registered trade mark remains valid, once the same is validly 
assigned, the assignee derives the same right as that of the 
assignor in terms of the statute - Allegation of trafficking is a G 
serious one - It must be proved in presence of the person 
against whom such allegations are made - Assignor is a 
'· 
necessary party - Party - Necessary party. 
... 
1161 
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1162 
SUPREME COURT REPORTS 
[2008] 17 S.C.R. 
A 
First respondent is the registered proprietor of trade 
mark 'Field Marshall' for diesel engine since 1964. 
Appellant commenced its business in centrifugal pumps 
:>.: 
'\ 
also under the trade mark 'Field Marshall'. First 
respondent filed a suit in High Court for grant of decree 
B of permanent injunction alleging infringement of trade 
mark 'Field Marshall' against appellant. An ex-parte order 
of injunction was passed. Mis Jain Industries was 
registered proprietor of trade mark 'Field Marshall' for 
flour mills, centrifugal pumps etc. and got it renewed from 
c 
time to time. D4ring proceedings in the said suit, M/s Jain 
Industries by deed of assignment assigned the said trade 
mark in favour of the appellant. 
Respondent filed an application under ss.46, 56 and 
107 of the Trade and Merchandise Marks Act, 1958 
contending that M/s Jain 'Industries having not used the 
D trade mark in respect of centrifugal pumps for a period 
of more than five years and one month, the mark should 
be taken off the register. First respondent claimed user 
of said mark since 1963 and sought for rectification of 
register. Appellant appeared in the said suit and 
E 
contended that it was registered owner of trade mark 
which was sought to be cancelled. In view of that 
statement, first respondent requested the court for 
permission to withdraw the petition with liberty to file a 
fresh petition on same cause of action. 
F 
A fresh application was filed by first respondent. 
However M/s Jain Industries was not impleaded as party 
therein. Meanwhile Injunction matter came up for hearing 
._.. 
" 
and the High Court held that appellant having become the 
registered proprietor of said trade mark, no case for grant 
of injunction was made out. The interim order of 
G injunction was vacated and appellant was permitted to 
use their registered trade mark. Correctness of said order 
was not questioned. The second rectification application 
filed by first respondent was dismissed by Board. High 
I 
Court in writ petition set aside the order of Board and 
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M/S. THUKRAL MECHANICAL WORKS v. P.M. DIESELS 1163 
PVT. LTD. & ANR. 
~ 
directed it to adjudicate the dispute on merits. Hence the 
A 
instant appeal. 
Allowing the appeal, the Court 
HELD:1. The Trade and Merchandise Marks Act, 1958 
was enacted to provide for the registration and better 
protection of trademarks and for the prevention of the use 
B 
of fraudulent marks of merchandise. Registration of a 
trade mark remains valid for seven years. Renewal 
applications are required to be filed on the expiry of 
/ 
seven years. Mis. Jain Industries got itself registered and 
obtained period

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