B.N. Kirpal, J.
(1) This order will dispose of the plaintiff's application under Order 39, Rules I and 2 being Ia 7329/85 and the defendant's application under Order 39, Rule 4 being Ia 6624/86.
(2) The plaintiff has filed a suit, inter alia, praying for perpetual injunction restraining the defendants, their servants, agents etc. from manufacturing, selling or otherwise dealing in diesel oil engines and parts thereof, electric motors, agricultural pumps or centrifugal pumps or parts thereof bearing the trade mark "Field Marshal" or any other similar or identical trade mark. There is also a prayer for a perpetual injunction restraining the defendants, their agents etc. from passing off diesel oil engines and parts thereof such as pumps and electric motors under the trade mark "Field Marshal". It is alleged in the plaint that since the year 1963 the plaintiff company has been carrying on the business of manufacturing, marketing and exporting of diesel oil engines and parts thereof not for land vehicles), centrifugal pumps, electric motors and parts thereof. It is also alleged that the trade mark "Field Marshal" has been registered under the provisions of the Trade and Merchandise Marks Act 1958. The registration number and the clause under which it has been registered has been indicated in the plaint. It is further alleged that the defendants have started manufacturing and marketing agricultural pumps or centrifugal pumps which are identical or deceptively similar to the trade mark "Field Marshal" and the adoption of the trade mark "Field Marshal" by the defendants amounts to infringement of the plaintiff's well known and registered trade mark "Field Marshal". On the averments so made in the plaint an ex parte injunction was issued on 19th December, 1985 restraining the defendants from manufacturing or selling either themselves or through their dealers or representatives, diesel oil engines or parts thereof with the trade mark "Field Marshal" and/or any other trade mark identical therewith and all goods falling in Clause 7 of the Trade and Merchandise Mark Rules. After notice was served and the defendants appeared on 8th April 1986 it was noted by this Court that the defendants have been manufacturing and selling centrifugal pumps for agricultural purposes which are allied to diesel oil engines having the impugned trade mark "Field Marshal" and are passing off of these goods as the goods of the plaintiff. It was further observed that the plaintiff appeared to have a good prima facie case with regard to the action of passing off. The prayer of the defendant to suspend the injunction was declined. The application, however, was not finally disposed of and the ex parte in- junction was continued till further orders.
(3) On behalf of the defendants, in the written statement which is filed, ii has been stated that the plaintiffs have not been manufacturing and selling centrifugal pumps for agricultural purposes. It is further contended that the plaintiffs do not have a registered trade mark of "Field Marsh al" in respect of centrifugal pumps. The defendants have claimed the use of the trade mark "Field Marshal" in respect of the centrifugal pumps since the year 1973. In the application under Order 39, Rule 4 being Ia 6624/86 it is further contended that the defendants the registered proprietor of the trade mark "Field Marshal" in respect of the flour mills, circulating and centrifugal pumps, couplings for machines, pulleys and valves (parts of machines). Along with this application a copy of the entry relating to the Trade Mark Mo. 228867 has been filed which discloses that the trade mark "Field Marshal" was registered in respect of the aforesaid goods including the centrifugal pumps w.e.f. 30th May, 1965. It is further disclosed from this entry that this registration was in the name of Puran Chand Jain and Kailash hand Jain, trading as Jain Industries, Agra and by virtue of an agreement dated 30th May, 1986 this trade mark has been assigned to the defendants, and that the registration of this trade mark is renewed for the further period of seven years from 30th May, 1986. This change in the registration of the name of the proprietor was made pursuant to the order dated 24th October 1986 of the trademark authorities,under Section 44 of the said Act.
(4) After the filing of the application under Order 39, Rule 4, the plaintiff filed an application being C.O. 6/87 under Section 46 of the Act for removal/rectification of the register so as to delete the registration of the mark "Field Marshal" in relation to the centrifugal pumps etc. which had been granted to the defendant. It may here be stated that prior to the filing of the application under Order 39, Rule 4, the plaintiff had filed C.O. 9/86 for cancellation/rectification of the registered trade mark against Jain Industries, Agra, but this C.O. was withdrawn when the plaintiff got to know that M/s. Jain Industries had transferred the proprietory right in the trade mark "Field Marshal" in favor of the defendants and it is thereafter that the C.O. 6/87 was filed. The submission of the learned counsel for the plaintiff is that the plaintiff has been using the trade mark "Field Marshal" even in respect of the centrifugal pumps which it was manufacturing since 1963 and, even though the plaintiff is not the registered owner of the trade mark "Field Marshal" in respect of the centrifugal pumps, nevertheless, it can take action for passing off against the defendants. It is further contended that the defendant is guilty of a number of frauds and no indulgence should be shown to the defendant. The frauds which are alleged, inter alia, are that the defendant has manipulated documents in an effort to show that it has been manufacturing centrifugal pumps since 1973. It is further alleged that the defendant is also responsible for tampering with the records of the Trade Mark Registry in Bombay and has made certain unauthorised deletions in the documents of the plaintiff which were in that Registry. It is further contended that Shri Puran Chand Jain, who was the owner of the trade mark "Field Marshal" in respect of the centrifugal pumps had died on 28th November 1983 and, therefore, this mark could not have been transferred to the defendants.
(5) Counsel for the defendants, however, has refuted the aforesaid allegations. For the view that I am taking, it is not necessary for me to go into the correctness of the allegations of frauds which have been made by the plaintiff.
(6) From the aforesaid is clear that at the lime when ad interim ex parte injunction had been granted the plaintiff was not the registered proprietor of the trade mark "Field Marshal" in respect of the centrifugal pumps. Similarly, the defendant also was not the proprietor of the said trademark. At that time the registered proprietor of the trade mark "Field Marshal" in respect of the centrifugal pumps was Puran Chand Jain and Kailash Chand Jain trading as Jain Industries, Agra. Subsequent to the filing of the suit and the grant of ad interim injunction, by virtue of an agreement dated 30th May 1986 this trade mark has been assigned to the defendants. Pursuant to the order dated 24th October, 1986 the defendants are now the admitted owners of the said mark.
(7) The main question which would, therefore, arise for consideration at this stage is whether notwithstanding the application of the plaintiff for cancellation/rectification of the aforesaid trade mark, which has now been filed against the defendants, can the plaintiff ask for the grant of or for the continuance of an interim injunction restraining the registered proprietor of a trade mark from using that trade mark.
(8) In order to appreciate the aforesaid question, it is pertinent to note that before a trade mark is registered by the trade mark authorities elaborate procedure has been provided. Procedure, inter alia, requires application for registration of the trade mark being made, the application being advertised, objections, if any, being invited and decided and then registration granted. In the present case all these formalities, presumably, must have been undertaken prior to the grant of registration in 1965 in the same of Puraii Chand Jain and Kailash Chand Jain of Agra. At that time, according to the averments of the plaintiffs, they were manufacturing centrifugal pumps bearing the trade mark "Field Marshal". The plaintiffs, admittedly, did not raise any objection before the Trade Mark Registry against the proposed grant of registration of the mark "Field Marshal" in respect of the centrifugal pumps in favor of Puran Chand Jain and Kailash Chand Jain. It may be that, as sought to be contended by learned counsel for the plaintiff, non raising of such an objection before the Trade Mark Registry does not preclude the plaintiffs from applying to this Court for rectification of the register, but the non filing of any objections before the Trade Mark Registry is certainly a circumstance which would be relevant while considering the request of the plaintiff for the grant of a temporary injunction against a registered proprietor of the.trade mark.
(9) Learned counsel for the plaintiff had sought to contend that what is important in trade maik proceedings is not the registration, but the actual user of the trade mark. Even if the defendant is the registered proprietor of the trade mark "Field Marshal" in respect of the centrifugal pumps; but if the plaintiff was using the said trade mark at a point of time which was earlier than such user/registration by the defendant, then the plaintiff's right is one which is recognised by law. The learned counsel sought to rely, in this connection, on the following passage of Narayanan's Trade Marks and Passing Off, page 6 :-
"(C)Property rights in a trade mark acquired by use are superior to similar rights obtained by registration under the Act. This is clear from the preamble which refers to "better protection of trade marks", thereby necessarily implying the existence and availability of some protection under common law. It, therefore, follows that prior users of trade marks should be protected against any monopoly rights granted under the Statute. This principle is enacted in Section 33."
(10) The aforesaid extract clearly shows that the said opinion is based on the provisions of Section 33 of the Trade and Merchandise Marks Act, 1958. Section 33 of the Act reads as follows :-
"33.Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior- (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his ; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark."
(11) In my opinion the said provision can have no application to the present case. Section 33 undoubtedly recognises the right of a prior user of a trade mark. Because of the said provision the registered owner of the trade mark cannot restrain a prior user of the trade mark from using the said trade mark. Section 33 gives a right of user to the prior user of the trade mark, but it does not in any way take away the right of the registered proprietor from using the said trade mark. What the plaintiff wants by this application is that the registered owner of the trade mark should be restrained from enjoying its proprietory right in the said trade mark. Section 33 of the Act does not give any such right to the plaintiff. At best it would protect the right of the plaintiff to use the trade mark, if it can prove prior user, if the defendant wants to take any action against the plaintiff.
(12) The Trade Mark Act confers certain rights on the registered proprietor of the trade mark. Section 28 of the Act sets outs the rights which are conferred by registration and the said section reads as under :-
"28.(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the user of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under Sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor."
(13) Section 31 of the Act provides the registration to be the prima facie evidence of validity. Section 31(1) which is relevant reads as under :-
"31(1)In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 56), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be 'prima facie" evidence of the validity thereof."
(14) The perusal of the aforesaid provision clearly shows that an exclusive right to the use of the trade mark has been given to the registered proprietor by Section 28(1) in relation to the goods in respect of which the trade mark is registered. It is the registered proprietor who is also given the right to obtain relief in respect of the infringement of the trade mark. It is true that Section 28(1) confers the right on the registered proprietor if the registration is valid. This provision has, therefore, to be read along with Section 31(1) which, inter alia, provides that the registration of the trade mark shall be the prima facie evidence of the validity thereof. Reading the two provisions together, namely Section 28(1) and Section 31(1), the implication would be that as long as a trade mark stands registered in the name of a proprietor, the said registration shall be deemed to be valid and the registered proprietor would have an exclusive right to use the said trade mark. If the registration is cancelled by an action being taken under Section 56 of the Act, then the protection and right afforded under Section 28(1) read with Section 31(1) would no longer be available, but till the Register of Trade Mark is corrected and the name of a person holding a trade mark is deleted, that person who is shown as the proprietor of the registered trade mark would continue to have all the rights and privileges which are conferred by the Act on the registered owner of the trade mark. Therefore, even though the plaintiff has filed an application in this Court being C.O. 6/87 for rectification of the Trade Mark Register for deletion of the name of the defendants there from, the registration of the trade mark in the name of the defendants is prima face evidence of the validity thereof because of the provisions of Section 31(1).
(15) In the present case the plaintiff is the registered proprietor of the trade mark "Field Marshal" in respect of diesel oil engines or parts there of. The defendants, on the other hand, are also the registered proprietor of the trade mark "Field Marshal", but in respect of centrifugal pumps etc. Inasmuch as both the plaintiff and the defendants are the registered proprietors of the trade marks which are identical, namely, "Field Marshal", the provisions of Section 28(3) of the Act would be applicable to the present case. By virtue of this provision, the exclusive right to use the trade mark "Field Marshal" shall not be deemed to have been acquired either by the plaintiff or by the defendant as against each other, but both the plaintiff as well as the defendant have otherwise the same rights as against other persons as they would have if they were the sole proprietors. Section 28(3) therefore, protects the proprietory rights of both the plaintiff as well as the defendant. They would be entitled to take action against anyone, if the trade mark is infringed, but neither the plaintiff nor the defendant are entitled to take action against each other because both of them are registered proprietors of identical trade mark, though in respect of different types of goods.
(16) Learned counsel for the plaintiff sought to rely upon a decision in the case of the Valentine Extract Company Limited (1901 (Vol. 18) Rpc 175) so as to contend that an injunction can be issued restraining the registered owner of a trade mark from using the said mark. The head note of the said report reads as follows :--
"V.,in 1897, registered three Trade Marks, each consisting of the word "Valtine," for all goods in Classes 3 and 42, and in Class 43 for beer and spirits, and purported to assign them to a Limited Company formed to carry on the business of meat extract manufacturers, with his good will, if any. Another Company obtained an injunction restraining the Limited Company from selling meat extract or meat juice under the name "Valtine," and subsequently moved to remove the marks from the Register of Trade Marks, the grounds of the application being that at the date of the assignment V. had no goodwill to assign, that the marks were deceptive, and had not been used except for meat extract. An Order was made moving the marks from the Register with costs."
(17) In my opinion, the aforesaid decision can be of no assistance to the plaintiff. Firstly, Mr. Justice Farwell of the Chancery Division had no occasion to consider or deal with a provision similar to Section 28 and 31 of the Trade and Merchandise Marks Act, 1958 The submission of Mr. Anand, learned counsel for the defendant is that in fact the Trade and Merchandise Marks Act applicable in England at that time did not contain a provision similar to Section 28 and 31 of the Indian Act. Secondly, no contention was raised before the Court in Valentine's case that an injunction cannot be granted restraining the registered owner from using the trade mark.
(18) Learned counsel for the defendant, on the other hand, has drawn my attention, to the decision of S.S. Chadha. J. in Ia 2061/78 in Suit No. 530/78 M/s. Mayor Brothers v. M/s. Watkins Mayor and Co. decided on 13th April, 1983. In that case also, an injunction was sought for restraining the registered holder of the trade mark from using the trade mark. It was alleged that the trade mark which was being used by the defendants was similar to that of the plaintiffs. Furthermore, the plaintiff therein had also moved a petition in the High Court against the order of the Registrar granting registration of the mark to the defendants. In addition thereto, independent proceedings had also been initiated in this Court for rectification and cancellation of the registration of the trade mark. The temporary injunction which was asked for was not granted and it was, inter alia, observed by S.S. Chadha, J. as follows :-
"SO,the right of the defendants, who are registered holders of the trade mark cannot be interfered, it lies been brought to my notice that the plaintiffs have filed a petition in this court, being C.M. (T & M) No. 68/1979 against the order of the registrar of trade marks granting registration to the defendants, but no slay has been granted in that petition for staying the operation of the orders of the registrar of the trade mark granting registration. It has also been brought to my notice that the plaintiffs have filed another independent proceedings for rectification, cancellation of the registration of the trade mark of the defendants and that is pending in this Court being C.0. No. 5 of 1979. Again there is no interim relief granted in that suit. The defendants who are registered proprietor of the trade mark are entitled to use that trade mark till the registration stands. These rights have been conferred on the defendants by virtue of provisions of Section 28 of the Act even though the marks may be similar."
(19) Similarly, D.R. Khanna, J. while dealing with a similar application under Order 39, Rules 1 & 2 being 1.A. 2969/82 in Suit No. 1024/82, being Marfleet Refining Co. v. Warden Chemicals, observed as under :-
"THE fact remains that "SEA In SEAS" already stands registered under the Trade and Merchandise Marks Act in favor of Warden Chemical Works. As long as this mark is allowed to subsist under that Act, no injunction against its user can be issued."
(20) As has been already observed earlier, it is not necessary to go into the correctness of the allegations of fraud made by the petitioner as the said allegations will have to be examined and decided while dealing with the plaintiff's application for rectification of the Register of Trade Marks, namely, C.0.6/87.
(21) For the aforesaid reasons, I do not find any case being made out for restraining the defendants from using their registered trade mark during the pendency of the suit. I accordingly vacate the interim injunction already granted and permit the defendants to use their registered trade mark, but subject to these conditions :-
(A)Defendants will not use the logo/style of the word "Field Marshal" of which logo and style the plaintiff is the proprietor under the Copyright Act.
(B)Defendants shall mention the name of the defendant firm, Thukral Mechanical Works, Sirhind on each and every centrifugal pump manufactured by them and sold in the name of "Field Marshal".
(C)The defendants shall maintain proper accounts of the sale of centrifugal pumps under the trade mark "Field Marshal" and shall file them in Court as and when directed.
(22) The applications are accordingly disposed of. There will be no orders as to costs.