MAHARASHTRA NATIONAL LAW UNIVERSITY, MUMBAI

Patel Field Marshal Agencies and Ors.

Vs.

P.M. Diesels Ltd. and Ors.

Submitted By:

Name: Ayushman Singh

Roll Number: 2021 130
Section – A
II Year.

Submitted To:

Ms. Teesta Hans

Assistant Professor in Law
Maharashtra National Law University, Mumbai.

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 TABLE OF CONTENTS

BACKGROUND OF THE CASE ............................................................................................. 3

BRIEF FACTS OF CASE ......................................................................................................... 3

ISSUES RAISED: ...................................................................................................................... 3

ANALYSIS OF THE JUDGEMENT ........................................................................................ 4

REASONING GIVEN BY THE COURT ................................................................................. 4

APPLICABLE LAW IN THE JUDGEMENT AND ITS SIGNIFICANCE ............................. 5

REVERSE ORDER ................................................................................................................... 6

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 BACKGROUND OF THE CASE

The mentioned case is a civil appeal in the Supreme Court of India, decided by a two
judge bench (Ranjan Gogoi and Navin Sinha, JJ.). Previously possessed by the High Court of
Gujarat, the judgment by Gujarat HC has been affirmed by that of the Supreme Court. The case
is based on Mercantile Laws, Commercial Transactions including bankings, Trade Marks,
Copy Rights, Patents, Designs.

BRIEF FACTS OF CASE

“ According to the information presented in the case, the Respondent (P.M. Diesels
Ltd.) was the owner of three registered trade marks, and the phrase "Field Marshal" appeared
in all three of the Respondent's trademarks. One of the registrations was for the trademark Field
Marshal, another was for the font style of the phrase "Field Marshal," and the third was for
"FM Field Marshal." 1964 was the year when the first one was registered, and 1968 was the
year when the other two were registered.

On the other hand, the Appellants (Patel Field Marshal Agencies Ltd) submitted their
trademark application for the word "Marshal" in the year 1982. As soon as the respondents
became aware of the situation, they sent the appellants a letter demanding that they stop using
the trademark and registered it in any capacity. ”

ISSUES RAISED:

“Whether recourse to the remedy of rectification under Sections 46/56 of the 1958 Act
would still be available to contest the validity of the Trade mark registration even if no issue
on the said question of validity has been framed in the suit or if framed has not been pursued
by the concerned party in the suit by filing an application to the High Court for rectification
under Sections 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958.”

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 ANALYSIS OF THE JUDGEMENT

The Old Act's (1958) Sections 46, 56, 107, and 111 correspond to the New Act's (1999)
Sections 47, 57, 125, and 124, which govern rectification actions for the removal of a trademark
from the Register. While Sections 47 and 57 provide for independent rectification processes
before the statutory body and the Intellectual Property Appellate Board ("IPAB"), Sections 124
and 125 provide for rectification proceedings initiated in connection with a trademark
infringement litigation. The misunderstanding is caused by the fact that in the latter case, only
the civil court may be approached, which must first establish if the problem of the validity of
registration of a trademark exists prima facie. If the court concludes that the answer to this
question is affirmative, one must initiate rectification actions within the three-month statute of
limitations specified by the Act; otherwise, the issue of the validity of the trademark will be
regarded abandoned. In this case, the Supreme Court examined what happens to a person's
rights under Sections 47 and 57 when an action for infringement is filed. Do Sections 124 and
125 immediately render Sections 47 and 57 inapplicable? Or do they operate concurrently?

It was determined that the plea of rectification would expire if it were abandoned, and
the parties would have no remedy under sections 46 and 56. If the same is allowed to subsist
then the same would lead to anarchy. In other words, if the parties do not approach the tribunal
for rectification after the order of the civil court, then the parties relinquish the plea to
rectification.

REASONING GIVEN BY THE COURT

The Supreme Court has ruled that in order to properly understand any piece of law, it
is necessary to read the full piece of legislation in its entirety. It was made clear that only the
IPAB has the ability to decide whether or not the registration of a trademark is legal, and that
this decision will bind the civil courts in the event that rectification actions are initiated on their
own. However, the Supreme Court also makes it clear that the same does not apply when the
issue of validity of trademark is raised in a suit for trademark infringement. The Supreme Court
states that “in a situation where a suit is pending, whether instituted before or after the filing
of a rectification application, the exercise of jurisdiction by the prescribed statutory authority
is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of
invalidity.” This means that the exercise of jurisdiction by the prescribed Therefore, in the latter
case and in line with the Astrazeneca case, the Supreme Court stated that when the civil court
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finds that the issue of validity of the trademark registration doesn't exist prima facie, the only
other option available for an aggrieved litigant is to appeal the same, and at that point, his rights
under Sections 47 and 57 are considered to be exhausted. This ruling was made in accordance
with the Astrazeneca case. After the civil court determines that there is a prima facie case
contesting the validity of the trademark, the same thing happens if the claimant fails to submit
rectification procedures within the limitation period. The court also cited the need to prevent
repeated procedures of the same matter, which may have led to inconsistent verdicts if allowed
to continue. This justification was presented as an alternative.

APPLICABLE LAW IN THE JUDGEMENT AND ITS SIGNIFICANCE

• “Trade mark Laws - Infringement.

• Rectification application of trademark.
• Sections 46, 56, 107 and 111 of the Trade and Merchandise Marks Act, 1958.
• Section 124 of the Trade marks Act, 1999.
• The abovementioned laws are significant in resolving the conflict between multiple
proceedings of Intellectual property rights related issues. Such as by directing to stay one
of the proceedings in case when there are multiple suits pending on the same subject matter.
This helps in getting a single unbiased outcome and to remove inconsistency from the
judgements.”

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 REVERSE ORDER

1. A relatively simple question though of considerable importance in Intellectual Property

Rights jurisdiction has presented itself for an authoritative pronouncement of this Court in
the present bunch of appeals. The issue will be formulated for an answer at a subsequent
stage and for the present relevant facts giving rise to the issue will be considered.

2. P.M. Diesels Ltd. has three trade marks with "Field Marshal" in common. The Respondent-
Company (via its predecessor) received three registration certificates from the Registrar of
Trade Marks: "Field Marshal" (Registration No. 224879); "Field Marshal" in lettering style
(Registration No. 252070); and "FM Field Marshal" (Registration No. 252071-B). The first
registration certificate is 16.10.1964, while the second and third are 4.10.1968.

3. It appears that sometime in the year 1982 the Appellants - Patel Field Marshal and Anr.
applied for registration of the trademark "Marshal" for their use. Having come to know of
the said application and perceiving a similarity between the mark in respect of which
registration was sought by the Appellants and the mark(s) registered in favour of the
Respondent, the Respondent served a legal Notice dated 23.07.1982 asking the Appellants
to desist from using the mark in question, i.e., "Marshal".

4. In the year 1989, the Respondent instituted a suit before the High Court of Delhi (Suit No.
1612 of 1989) for infringement of trademark, rendition of accounts of profit earned by the
Appellants from use of the mark "Marshal" and for perpetual injunction to restrain the
Appellants from using the trading styles "Patel Field Marshal Agencies" and "Patel Field
Marshal Industries". An Interlocutory Application for temporary injunction was also filed.

5. Patel Field Marshal Agencies challenged P.M. Diesels Ltd. on jurisdiction and merits. The
Defendants-Appellants (Patel Field Marshal Agencies) also disputed the Respondent's
trademark "Field Marshal" and requested that it should be corrected in the trademark
register in their written declaration.

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6. Also, to be noted that Sections 46, 56, 111 and 107 of The Trade and Merchandise Act,
1958 Act are in the view of the pari materia provisions contained in Trademarks Act, 1999,
i.e., Sections 47, 57, 124 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as
"the 1999 Act").

7. An issue to the said effect was framed in the suit. “Whether a party can have recourse to
sec 46 and sec 56 of the Act in an event where they failed to prefer an application for
rectification as per sec 107 read with sec 111 of the Act.”

8. “In the event that a suit for infringement has been filed in which the issue of validity of the
registration of the trade mark in question has been raised by either the Plaintiff or the
Defendant, but no issue on the said question of validity has been framed in the suit, or if it
has been framed, it has not been pursued by the concerned party in the suit by filing an
application to the High Court for rectification under Sections 111 read with Section 107 of
the Trade and Marks Act, the court.”

9. The Appellant asserts in the action that Sections 107 and 111 of the 1958 Act call for the
granting of approval for the filing of rectification applications, a condition that, it is argued,
does not appear to arise from a reading of the aforementioned two 1958 Act provisions. It
is submitted that under the 1958 Act, there are two categories of right vested; the first in
the owner of a registered trade mark (Sections 28 and 29) and the second in a person
aggrieved by such registration (Sections 46 and 56). The abovementioned rights are totally
independent and parallel to each other.

10. In the case of National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd. and Anr1 held that “the
only requirement for filing a rectification application under the provisions of Sections 107
and 111 of the 1958 Act is that the applicant shall be a "aggrieved person," which also
incorporates a party against whom an infringement action has been taken or is threatened
by the legal registered proprietor of the trade mark.”

1
(AIR) 1971 SC 898.

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11. From the side of the Appellants, their contention is on Section 32 of the 1958 Act, which
states that the validity of a registered trade mark is conclusive after the expiration of a
period of seven years from the date of registration, with the exception of cases that are
covered by Sub-clauses (a), (b), and (c) of Section 32. “It is maintained that the point of
conclusiveness as to validity of the registration of the trade mark might be challenged in an
infringement litigation as also in a rectification application. The basic necessity of
authorization of a subordinate court (District Court) for filing of the rectification
application before a higher Court (High Court), in the light of the provisions of Section 107
and 111, cannot be the legislative aim.”

12. Also, a strong claim can be made by taking reference from the Specific Relief Act, 1963.
The Supreme Court in the case Cotton Corporation of India Ltd. v. United Industrial Bank
Ltd. and Ors.2 - “opined that the provisions of Section 41 (b) of the Particular Relief Act
of 1963, which prohibit a subordinate court from blocking an individual from initiating a
process in a superior court, have also been emphasised and relied upon.”

13. The Madras High Court took a contrary view in B. Mohamed Yousuff v. Prabha Singh
Jaswant Singh and Ors.3 ruled that Sections 124 (1)(i) and (ii) of the 1999 Act apply on
two distinct levels and in two distinct circumstances. The former covers circumstances in
which a rectification application is already pending, whereas the later rules circumstances
in which no such procedure is ongoing. “The Madras High Court was of the opinion that
both sub-clauses limit their scope of applicability to the stay of a civil suit for infringement
and do not address the Court's discretion to grant or disallow the filing of a rectification
application. The High Court was also of the opinion that a bare reading of Section 124(1)(ii)
of the Act of 1999 does not reveal that the a party to firstly requires to obtain
permission/leave of the Court to file a rectification application, which is a statutory right
conferred by the Act (Sections 47 and 57 of the 1999 Act) and thus cannot be limited by
any other provision of the 1999 Act.”

2
(1983) 4 SCC 625.

3
(2008) 38 PTC 576.

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14. Data Infosys Limited and Ors. v. Infosys Technologies Limited4 similar issue arose before
Given the conflicting opinions “Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and
Pharmaceuticals Ltd.5 and B. Mohamed Yousuff (supra), the Delhi High Court may have
referred the case to a Full Bench for a more in-depth examination. After careful analysis,
the Full Bench of the Delhi High Court decided that the party asserting invalidity may apply
to the IPAB for rectification under Sections 47 and 57 of the 1999 Act where registration
of a trademark is contested after the commencement of an action for infringement.” The
Hight Court held, “the right to seek rectification Under Sections 47 and 57 of the 1999 Act
does not stand extinguished in a situation where in a suit for infringement the plea of
invalidity is found to be prima facie not tenable.”

15. Further in the case of Data Infosys the court took the view that if the aggrieved party files
a rectification application Under Sections 47 and 57 of the 1999 Act after expiry of the
period stipulated Under Section 124(2) of the 1999 Act, or the extended period, as may be,
the rectification application would still be maintainable and would have to be decided on
merits by the IPAB and the final decision of the Board on the rectification application
would have no bearing on the suit notwithstanding the fact that the plea of invalidity is
deemed to have been abandoned therein. The only effect of the belated filing of the
rectification proceeding would be that there would be no stay of the suit.

16. According to the Full Bench, the jurisdiction to adjudicate issues regarding the validity of
a trademark registration is entirely vested in the statutory authorities, namely the Registrar
or the IPAB, and the Civil Court is statutorily precluded from addressing the merits of the
invalidity petition. Therefore, the jurisdiction of the IPAB vested under the statute cannot
be revoked based on the Civil Court's determination of the prima facie tenability of the plea
of invalidity or the failure of the aggrieved party to file a rectification application within
the time limit prescribed by Section 124(2) of the 1999 Act. In addition, the Full Bench
was of the conclusion that Section 124(3) solely considers the abandoning of the plea or

4
2016 SCC OnLine Del 677.

5
2006 (32) PTC.

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 defence of invalidity in the litigation, and not the abandonment of the claim for rectification
under Sections 47/57 of the 1999 Act.

17. Therefore, a party can seek redress by filing a motion under Sections 46 and 56 of the Act
of 1958 even if they failed to apply for rectification under Section 107 and 111 of the 1985
Act. Any party aggrieved by the removal of a trademark may submit a petition for
correction of the register. This application may be filed with the Registrar of Trademarks
or the Appellate Board (Intellectual Property Appellate Board) for the removal of the
trademark from the Register of Trademarks or for the correction of the Register of
Trademarks. By the virtue of the operation of the 1958 Act and concluding the above
discussed legal points, the plea of rectification of trademark must be allowed as considering
the below points:

a. The bare reading of the Section. 107 and 111 does not restrict parties from filing a
trademark rectification application even if they did not approach the tribunal for
rectification; and

b. As per the Act of 1958, there are two types of rights which are granted to the parties.
One is granted to the owner of a registered trademark and the other is granted to a
person who is aggrieved by such a registration. Both are independent of each other
thus both have a right to file a trademark rectification application; and

c. A person needs merely be an aggrieved party in order to prefer an application under

sections 107 and 111.

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