Court: Supreme Court of India

Bench: Ranjan Gogoi Justice, Navin Sinha Justice

Parties:

Petitioner(s)- Patel Field Marshal Agencies And Anr.

Respondent(s)- P.M. Diesels Ltd. And Ors.

Introduction

The Supreme Court addressed an important matter related to Trademark Law and settled the dispute regarding Sections 45, 56, 107, and 111 of the Trade and Merchandise Marks Act, 1958.

Case Facts of Patel Field Marshal Agencies v. PM Diesels Ltd

The respondent was the actual proprietor of the three registered trademarks which included and had the common phrase ‘Field Marshal’ in their trademarks. The defendant filed an appeal in 1989 for infringement of trademark and the issue came up before the Delhi High Court. The appeal mostly constituted three claims. Firstly, the defendant company claimed an injunction order from the High Court on a permanent basis regarding the prevention of usage of the phrase ‘Field Marshal’ by P.M. Diesels Ltd. Secondly, the appeal also claimed the account of profits that P.M. Diesels Ltd. incurred while using their trademarks. Another claim, that was put forward by the Patel Field Marshal Agencies was to order an interlocutory injunction. The argument put forward by the respondent was to scrutinize the validity of the registration of the trademark that was in question in this case. When the appeal was pending before the Delhi High Court, it was also appealed before the Gujarat High Court for proceedings.

Issues raised in Patel Field Marshal Agencies v. PM Siesels Ltd.

• Whether the appeal filed was an infringement suit?
• Whether there is an available remedy under section 111 read with section 107 of the Trade and Merchandise Marks Act, 1958 for the validity of the trademark addressed in this suit?
• Whether under sections 46 and 56 of the Trade and Merchandise Marks Act, 1956, the party will be entitled to seek redressal?

Laws Involved in Patel Field Marshal Agencies v. PM Diesels Ltd.

(I) Trade and Merchandise Marks Act, 1956-

• Section 46- Removal from register and imposition of limitations on grounds of non-use.
• Section 57– Power to cancel or vary registration and to rectify the register.
• Section 124- Stay of proceedings where the validity of registration of the trademark is questioned, etc.
• Section 125- Application for rectification of register to be made to the High Court in certain cases.

(II) Specific Relief Act, 1963-

• Section 41(b) of Specific Relief Act: Injunction when refused.

Arguments

Arguments on behalf of Appellant

• According to the statute, there are two sorts of entitlements that are provided. The first is awarded to the proprietor of a registered trademark (Sections 28 and 29), and the second is awarded to a party who is harmed by such registration (Sections 46 and 57), both are distinct and parallel to one another.
• The appellants contended that Sections 124 and 125 anticipate the trial court providing authorization to file an application for restoration, which doesn’t result from a simple reading of the two clauses.
• One of the conditions that should be fulfilled for preferring an application under section 124 read with 125 should be that the appealing party must have incurred injury.
• A higher provision exists under Section 41(b) of the Specific Relief Act, 1963, which prohibits a subordinate court from prohibiting a person from commencing proceedings.

Arguments on behalf of Respondent

• The contentions put forth by the defendants expressly stated that the provision of section 111 of the act makes it simply clear and the court should be convinced regarding the dispute about the validity of trademark registration and should determine the rectification procedure.
• It was contended that Sections 46 and 56 apply in situations when no suit for infringement is awaiting adjudication. The above sections are independent of the latter sections mentioned during the case.
• It was contended that when a complaint for infringement is brought and concerns regarding the trademark’s validity emerge, and the court resolves the problem, the requirements of Section 111 will apply.

Held

In an appeal of infringement of a registered trademark, if there are concerns regarding the validity of the registration of the trademark, in that case, section 125 shall be applied which mentions that the application for rectification should be provided to the High Court and not to the Registrar. This is to guarantee that the legislative system in the pending infringement case, is not mixed up and thus, remains fair.

The Court eventually determined that, in a situation of the legitimacy of a registered trademark that is irrelevant to a complaint, the designated statutory authority would have the exclusive power to address the issue at hand. However, only when a suit is pending, either before or after the filing of an application for rectification, the jurisdiction where the matter will be discussed might change based on the Civil Court ruling in regard to the action for the legitimacy of that registered trademark.

On the other hand, if the Civil Court is unable to discover a problem on which to test the complaint of infringement, the injured party will be unable to seek compensation under Sections 46 and 56. However, it is possible to oppose the Civil Court’s ruling in the following appeal in order to prevent consecutive hearings regarding the same matter, which could lead to a clash of decisions. As a result, the appeal was dismissed, and the order was issued in favor of the respondent.

Analysis

Similar cases have been addressed by the Madras and Delhi high courts. In Astrazeneca UK Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd., the court found that if civil courts find that the issue of trademark registration legitimacy does not arise prima facie, the only alternative left to an aggrieved claimant is to appeal. In comparison, the Madras High Court stated in B. Mohamed Yousuff v. Prabha Singh, that both procedures were autonomous of one another and ran concurrently. The same issue was raised again by the Delhi High Court in Data Infosys Ltd. v. Infosys Technologies Ltd., where the Division Bench overturned the Astrazeneca case. The Delhi HC stated that if civil courts decide that the concern of trademark application authenticity does not arise prima facie, or where the court states that it does exist prima facie, but the plaintiff fails to establish remediation proceedings within the limitation period, his remedy under Sections 47 and 57 remains untouched and certain plaintiff may opt to contest the legitimacy of the trademarks under these sections at a future stage.

Conclusion

In this case, the Supreme Court addressed in case of rectification of a registered trademark, whether it can be obtained in a pending infringement appeal with the same parties. The Supreme Court eventually resolved the apparent parallel remedy for contesting trademark validity through rectification actions. Furthermore, the Supreme Court’s rule precludes numerous proceedings on the same topic, a stockpile of cases, and the resulting dispute in conclusions.

This post has been submitted by Dibyangana Nag, a law student from CMR University School of Legal Studies, Bangalore.