V.B Bansal, J.:— While considering IA. 12345/92 of the plaintiff, notice was issued to the defendants for 7.1.1993 The defendants, their servants and representatives were restrained from manufacturing, selling and/or offering for sale or dealing in Centrifugal pumps, flour mills, circulating and coupling for machines, pulleys and valve and/or parts thereof and/or any other cognate or allied goods under the mark ‘Field Marshal’ or any other trade mark as may be deceptively similar to the trade mark of the plaintiff on 1.10.1992 This order would dispose of the aforesaid application.

2. M/s. Thukral Mechanical Works, plaintiff, filed a suit against M/s. Nitin Tools Private Limited, defendant No. 1 and Popular Machinery Store, defendant No. 2 for permanent injunction, restraining infringement of trade mark, passing off and rendition of accounts. Briefly stated, averments made in the plaint, have been that the plaintiff is a partnership concern, which includes its predecessors in title and interest, who have been engaged in the manufacture and sale of centrifugal pumps since the year 1973. It is also claimed that in 1973 the plaintiffs bonafidely and honestly adopted the trade mark ‘Field Marshal’ in respect of centrifugal pumps and parts thereof and since then this trade mark has continuously, extensively and openly been used. It is also claimed that this trade mark has acquired enviable reputation and has come to be identified and recognised as the genuine product of the plaintiff, who have been spending huge amounts on publicity and the sales run into lakhs of rupees.

3. It is also claimed that the plaintiff is also the registered proprietor of the trade mark ‘Field Marshal’ in respect of the flour mills, circulating and centrifugal pumps, couplings, etc. by virtue of registration No. 228867 dated 13.5.1965 and the plaintiff was subsequently registered as its proprietor. It is further claimed that this registration is valid and subsisting. Further claim of the plaintiff has been that originally the trade mark ‘Field Marshal’ was granted in the name of Shri Pooran Chand Jain and Kailash Chand Jain, trading as Jain Industries, 1166, Fatak, Suraj Bhan, Belan Ganj, Agra, which was assigned in favour Mr. Ganga Ram, Mr. Anil Kumar (HUF), Mr. Sunil Kumar and Ms. Sunita Rani trading as Thukral Mechanical Works, Sirhind, Punjab. It is also claimed that the name of the plaintiff as assignee has been entered in the register of the Registrar of Trade Marks' and that Shri Anil Kumar (HUF), retired from the business which was now continuously being carried on by partners Shri Ganga Ram, Shri Sunil Kumar and Ms. Sunita Rani, trading as Thukral Mechanical Works.

4. Further averments made in the plaint have been that defendant No. 1 is a company incorporated under the Companies Act, having its registered office at Rajkot and having sale outlets through out India, including Delhi, while defendant No. 2 is the agent, stockist, dealer and seller of defendant No. 1. It is further pleaded that defendants have recently adopted an identical mark ‘Field Marshal’ in respect of centrifugal pumps and part thereof in utter violation of the plaintiffs legal and statutory’ rights without any justification. Further claim of the plaintiff has been that the trade mark ‘Field Marshal’ adopted by the defendants is identical to the registered trade mark ‘Field Marshal’ of the plaintiff, which is being used in respect of the same goods as that of the plaintiff and in this way the defendants are committing the acts of passing off. The confusion and deception in the mind of the customers is inevitable in view of the similarity of the marks of the plaintiff and as adopted by the defendants. The plaintiff has also claimed that not only the defendants have infringed the trade mark of the plaintiff but they have also fraudulently described the trade mark ‘Field Marshal’ to be registered on their literature, which is not a fact. The defendants are alleged to have earned a lot on account of their illegal activities and, thus, the present suit. An application under order 39 rules 1 & 2 read with section 151, c.p.c has also been filed alongwith the suit.

5. Defendants have contested the suit as also the application and have filed both written statement and reply to the application. Briefly stated, the averments made in the written statement have been that the plaintiff has not come to the Court with clean hands and has suppressed and concealed material facts on account of which the suit itself is liable to be dismissed. It is also claimed that the plaintiff has obtained ex-parte ad-interim injunction by playing fraud upon the Court and by filing false, frivilous and fabricated documents. Defendants have also pleaded that the registered proprietors of the trade mark ‘Field Marshal’ in respect of flour mills, circulating and centrifugal pumps, couplings for machines, pulleys and valves etc. registered in favour of S/s. Pooran Chand Jain and Kailash Chander Jain, trading as Jain Industries, Agra, allegedly assigned to the plaintiff, had never used the said trade mark for the manufacture and marketing of centrifugal pumps and that they had restricted their business to flour mills only. In this way, M/s. Jain Industries could not acquire by non-user of the trade mark any rights and, thus, the same could not be acquired by the plaintiff by way of assignment. It is also claimed that there had been series of litigation between the plaintiff and M/s. P.M Diesels Ltd. from whom the rights have been acquired by defendant No. 1 who have been the proprietors of trade mark ‘Field Marshal’ in respect of diesel oil engines and parts thereof (not for land vehicles) since the year 1963.

6. Further averments made in the written statement have been that the plaintiff has made a dishonest and false averment to the fact that the cause of action arose in September 1992 when the defendant No. 1 started the manufacture and sale of centrifugal pumps whereas the defendant No. 1 has been the duly authorised manufacturer and sister concern of M/s. P.M Diesels, who are the registered owners of the trade mark ‘Field Marshal’. It is further claimed that M/s. P.M Diesels Ltd. have been manufacturing the articles since 1973-74 and even earlier to that and there has been litigation pending in the High Courts, which facts have been supressed.

7. Defendants have also claimed that the trade mark ‘Field Marshal’ was honestly adopted by M/s. P.M Diesels Ltd., who started manufacturing and selling monobloc pumps and motors, including centrifugal pumps and parts thereof under the trade mark ‘Field Marshal’ in the year 1973-74 and since then it has been in their open, continuous and extensive use through authorised manufacturers, including defendant No. 1. It is also claimed that the said products are marketed by M/s. P.M Diesels Ltd., who are the prior and honest adopters and users of the trade mark ‘Field Marshal’. It has been denied that the plaintiff has been using the impugned trade mark since 1973. Further averment made by the defendants has been that M/s. P.M Diesels Ltd. filed Suit No. 2408/85 in the Court and obtained ex-parte injunction against the plaintiff on 19.12.1985, which order was vacated on 19.1.1988 which fact has been suppressed by the plaintiff. Further averments made in the written statement have been that Mr. C.M Patel is the subscriber Director of both M/s. P.M Diesels Ltd. and defendant No. 1, which fact is within the knowledge of the plaintiff. The defendants have also claimed that M/s. P.M Diesels Ltd. have filed C.O No. 6 of 1987 against the plaintiff and the same is pending in this Court. A prayer has, therefore, been made that the suit may be dismissed.

8. Defendants have moved an application IA. 13703/92 under Order 39 Rule 4 read with Section 151, C.P.C with a prayer that the ad-interim injunction order dated 1.12.1992 be vacated and defendants be allowed to continue the use of the trade mark ‘Field Marshal’ in respect of centrifugal pumps and parts thereof during the pendency of the suit. Averments made in the application are the same as contained in the written statement as also in the reply to IA. 12345/92. Plaintiffs have filed reply to this application praying that there was no ground for the vacation of ad-interim injunction order and prayed that this application may be dismissed with special costs and the interim injunction order may be confirmed. Averments made in the reply are similar to the averments made in the plaint as also the application for injunction.

9. By this order I would dispose of both the applications, viz. IA. 12345/92 moved by the plaintiff and IA. 13703/92 moved by the defendants.

10. I have heard the learned Counsel for the parties and have also gone through the record.

11. Learned Counsel for the plaintiff has submitted that the plaintiff is the owner of the registered traded mark ‘Field Marshal’ in respect of different articles, including centrifugal pumps while the defendant was incorporated only in the year 1990-91. It is also submitted that the trade mark ‘Field Marshal’ in respect of centrifugal pumps was earlier registered under the name of Jain Industries and, subsequently, the plaintiff was registered as the owner of this trade mark, which registration is valid and subsisting. He has also submitted that the defendant cannot challenge the validity of the registration of the trade mark in an action for infringement and that people will have no right to imitate a mark even if wrongly registered. He has further submitted that the defendants have now recently started the manufacture and sale of centrifugal pumps in September, 1992, thereby causing irreparable monetary loss, besides loss to the reputation of the plaintiff and, so, a prayer has been made that the ad-interim injunction granted on 1.10.1992 may be confirmed.

12. Learned Counsel for the defendants has, on the other hand, submitted that the plaintiff has not come to the Court with clean hands and has suppressed the material facts. He has also submitted that M/s. P.M Diesels Ltd. have been the registered owners of the trade mark, who have been dealing in the centrifugal pumps also prior to the use of the same by the plaintiff and that the plaintiff has been relying on false and fabricated documents and has also suppressed material facts from this Court, in as much as, there has not been any mention of the previous litigation between the plaintiff and M/s. P.M Diesels Ltd., the predecessor-in-interest of the defendant No. 1. He has further submitted that defendant No. 1 is, in fact, a sister concern of M/s. P.M Diesels Ltd. and Mr. C.M Patel is the common director of both M/s. P.M Diesels Ltd. and defendant No. 1. He has further submitted that defendant No. 1 has been dealing in the centrifugal pumps as a licencee under the Agreement dated 1.2.1991 He has further submitted that M/s. Jain Industries from whom the plaintiff is claimed to have taken the rights had never been manufacturing centrifugal pumps under the trade mark ‘Field Marshal’ and that the predecessor-in-interest of the defendant No. 1 have been using the same much prior to the registration of the trade mark in the name of M/s. Jain Industries. He has further submitted that the plaintiff having not come to the Court with clean hands, having suppressed material facts and having placed reliance on false and fabricated evidence cannot get the equitable relief of injunction. It is also submitted that defendants would suffer irreparable loss and the plaintiff has no prima facie case and, so, a prayer has been made that the application may be dismissed and the ex-parte ad-interim order may be vacated.

13. The first question to be considered is as to since when the plaintiff has been using the trade mark ‘Field Marshal’ in respect of centrifugal pumps. Averment made in para 3 of the plaint has been that it was in the year 1973 that the plaintiff bonafidely and honestly adopted the trade mark ‘Field Marshal’ and since then they have been using the same continuously. Further averment made in para 7 of the plaint has been that in addition to the common law rights, the plaintiff is also the registered proprietor of the trade mark ‘Field Marshal’ in respect of flour mills, circulating and centrifugal pumps, couplings for machines, pulleys and valves etc. by virtue of registration No. 228867 dated 13.5.1965 and this mark subsequently became the proprietory mark of the plaintiff, which is still valid and subsisting. A copy of this registration has been filed by the plaintiff on record. A perusal of the same shows that the trade mark ‘Field Marshal’ brand (word per se) was registered in Part A of the Register on 13.5.1965 in Class 7 in respect of flour mills, circulating and centrifugal pumps; couplings for machines; pulleys included in Class 7, and valves (parts of machines) in the name of Pooran Chand Jain and Kailash Chand Jain, trading as Jain Industries, 1166, Phatak “Suraj Bhan, Belanganj, Agra, and in pursuance of the request dated 17.6.86 and order thereon dated 24.10.86 Ganga Ram Anil Kumar (HUF), Sunil Kumar and Sumitra Rani, trading as Thukral Mechanical Works Railway Road, Sirhind, Punjab, were registered as subsequent proprietors of this mark with effect from 30.5.86 in pursuance to the Agreement of even date. This registration is valid and subsisting in the name of the plaintiff.

14. The claim of the defendant has been that Popatlal, Narshinbhai Patel, Chhaganlal Narshibhai Patel, Narshibhai Dharamshibhai Patel (Karta of his own HUF), Ratilal Gangjibhai Patel, Ramniklal Gangjibhai Patel) and Dudhiben Ganjibhai Patel, trading as Patel Manufacturers, 7, Virani Industrial Estate, Rajkot, have been the proprietors of the trade mark ‘Field Marshal’ entered in Part ‘A’ of the Register maintained by the Registrar, Trade & Merchandise Act, on 4.10.1968 and pursuant to the request dated 6.7.81 and order thereon dated 17.1.83 M/s. P.M Diesels Private Ltd., Ajit Industrial Estate, Rajkot was registered as proprietor with effect from 1.7.81 This registration is valid and subsisting. Defendant No. 1 has also filed another document showing the words ‘Field Marshal’ (written in style) similarly registered on 4.10.1968 at No. 252070 in the name of Popatlal Narshibhai Patel etc. and, subsequently, it having been transferred in the name of M/s. P.M Diesels Ltd. The defendants have also filed a copy of the trade mark journal dated 1.4.65 in which there was publication with regard to the start of business under the trade mark ‘Field Marshal’ since the year 1963. A perusal of these two documents relied upon by the parties clearly indicates that both the plaintiff as also M/s. P.M Diesels Ltd., the predecessor-in-interest of the defendant, started their business under the trade mark ‘Field Marshal’ without there being any registration of the trade mark in their favour at the relevant time. It is also clear that it was subsequently that they had acquired the right from the registered owners, as already referred to.

15. The claim of the plaintiff has been that they have been using the trade mark ‘Field Marshal’ in respect of the centrifugal pumps since the year 1973 and the plaintiff has given the details of the sales right from the year 1973-74 upto 31.8.1992 in para 5 of the plaint. Learned counsel for the defendants has, however, pointed out that there was no manufacture of the centrifugal pumps under the trade mark ‘Field Marshal’ from the year 1973-74, as claimed, and that the documents relied upon by the plaintiff in this regard in different proceedings falsifies their claim. It would, at this stage, be appropriate to refer to the documents pointed out by the learned counsel for the defendants as to whether this claim of the plaintiff finds support from the material on record. It has not been disputed by the learned counsel for the plaintiff that documents were filed in opposition to the application of M/s. P.M Diesels Ltd. with opposition No. DEL 4109 to application No. 363764 which was subsequently withdrawn.

16. Learned counsel for the defendants has placed on record certified copies of the documents which were filed by the plaintiff. Plaintiff has also filed a photostat copy of the Bill No. 00210 dated 21.1.1980 for a sum of Rs. 3,870/-. A perusal of the photostat copy filed by the plaintiff and certified copies of the bills filed by the defendants makes it abundantly clear that these are the photostat copies of the two different bills and not of the same bill. It would, thus, indicate that two different sets of bill books were being used by the plaintiff. It would also be convenient at this stage to refer to the bill dated 10.4.1979, 9.1.1980, 15.2.1980, 8.9.1974, 18.12.1975 and 30.7.1973, which are the certified copies of the documents filed by the plaintiff before the Registrar of Trade Marks and other set of photostat copies of the bills relating to the same transactions and a perusal of the same indicates that these are the two different sets of the bill books being used by the plaintiff. It would, thus, be clear that the plaintiff has been making efforts to prepare documents to suit their convenience even by having duplicate sets of bill books. Defendants have also placed on record photostat copies of Jain Industries catalogue, Automatic dall and mini flour mills plants, original label of Jain Industries and the price list of Jain Industries, which clearly indicated that they had never dealt with the centrifugal pumps under the trade mark ‘Field Marshal’. There is no material on record from the side of the plaintiff to indicate to the contrary.

17. The claim of the plaintiff has been that they have been in the business of manufacturing the centrifugal pumps under the trade mark ‘Field Marshal’ since the year 1973. However, no prima facie evidence has been produced to substantiate this claim. The defendants have, on the other hand, pleaded that M/s. Patel Manufacturers, Rajkot, the predecessor-in-interest of the defendant No. 1, has entered into an Agreement with M/s. Indira Engineering, Ahmedabad on 23.4.1975, whereby M/s. J. Chandrakant & Co., Rajkot, were permitted to place orders for ‘Field Marshal’ centrifugal pumps to M/s. Indira Engineering, Ahmedabad. Copies of Orders of those years have also been placed on record. Defendants have also placed reliance on documents showing that M/s. Alpha Engineers of Rajkot were also authorised to deal in centrifugal pumps under the trade mark ‘Field Marshal’ for and on behalf of M/s. Patel Manufacturers. The question as to whether this was actually done or not would have to be gone into during trial, but prima facie it is clear that M/s. P.M Diesels Ltd. have been dealing in the trade mark ‘Field Marshal’.

18. It is the admitted case of the parties that M/s. P.M Diesels Ltd. had filed a suit for injunction against the plaintiff, viz., Suit No. 2408/85 reported as AIR 1988 Delhi 282. A perusal of this judgement makes it abundantly clear that it was in the knowledge of the plaintiff that M/s. P.M Diesels Ltd. had been claiming the proprietorship of the trade mark ‘Field Marshal’ and they had obtained an ex-parte interim injunction. The ex-parte order was, however, modified with the condition that the defendant would not use the logo style of the word ‘Field Marshal’, of which logo and style the plaintiff of that suit was the proprietor under the Copyright Act and that the defendant/plaintiff would mention the name Thukral Mechanical Works, Sirhind, Punjab, on each and every centrifugal pump manufactured by them and sold in the name of ‘Field Marshal’, besides maintaining proper accounts of the sale of the centrifugal pumps and filing of the same in the Court as and when directed. The defendant is claiming the right of manufacturing and dealing in the centrifugal pumps under the trade mark ‘Field Marshal’ under M/s. P.M Diesels Ltd. and the plaintiffs have conveniently avoided to implead M/s, P.M Diesels Ltd. as a party. The defendants have filed on record copies, of the advertisements in different newspapers wherein M/s. P.M Diesels Ltd. and M/s. Nitin Machine Tools Private Limited have jointly been shown as the proprietors of the trade mark ‘Field Marshal’.

19. It is also pertinent to note that the plaintiff has filed a suit for injunction in the Court of Shri S.S Gupta, Sub-Judge, Fatehgarh (Punjab), in which the application for injunction was dismissed as Sub-Judges have no jurisdiction to hear cases under the Trade & Merchandise Act. It is clear that the plaintiff, in fact, has been making efforts to get the order of injunction against M/s. P.M Diesels Ltd. and ultimately secured it in the present case by suppressing the factum of earlier litigation.

20. It is well established principle of law that injunction is an equitable remedy and it need not follow invariably even on the proof of a legal right. The grant of temporary injunction has to be in accordance with Order 39, C.P.C and not according to the provisions of Trade & Merchandise Act. Similarly, the grant of permanent injunction has to be in accordance with the provisions of the Specific Relief Act. Reference in this regard can be made to the decision of a Division Bench of this Court in Synthetic Moulders Ltd.… v. Semperit Aktiengesellschaft…, 1980 (10) RLR 263.

21. The case of the plaintiff had been that the trade mark ‘Field Marshal’ was registered in the name of M/s. Jain Industries, predecessor-in-interest of the plaintiff which they have acquired subsequently and on this account the plaintiff can pray for an injunction, restraining the defendant from using the same trade mark. I do not agree with this submission. There is no presumption of the user of the trade mark from its existence in the register maintained under Trade & Merchandise Marks Act, 1958. Reference in this regard can be made to the case Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 S.C 142. A trader acquires a right of property in a distinctive mark by using it openly or identifying it with his goods irrespective of the length of such user and the extent of its trade. Registration under the statute does not confer, any new right to the mark claimed or any greater rights than what already existed at common law. A trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. Learned counsel for the plaintiff has submitted that M/s. P.M Diesels Ltd. being not a party to the present suit, the defendant cannot claim any benefit on account of a litigation between the plaintiff and aforesaid M/s. P.M Diesels Ltd. He has further submitted that the defendant No. 1 bought the rights only in the year 1991 and he is not the registered user of the trade mark. On this account no relief can be claimed by defendant No. 1. I do not agree with this submission. Licensing of a registered trade mark without registration of the licencee as registered user under an Agreement is common and will not affect the validity of the registration. The only precaution to be taken is that the user of the trade mark does not lead to deception but indicate that the goods are marketed as those of the registered owner of the trade mark, though he has no control as the goods are not his goods. It is, in fact, a matter, between the registered owner and the licencee. The case of the defendants has been that defendant No. 1 being a licensing under M/s. P.M Diesels Ltd., he is answerable to the registered owner and there may not be anything illegal in the registered owner permitting the unregistered licensee to make use of the trade mark. The Trade & Merchandise Act does not prohibit the licensing of trade mark whether registered or unregistered and the use of the trade mark by non-registered user does not necessarily mean that the user is deceptive. The claim of the defendants has been that the use of the word ‘Field Marshal’ was started by the predecessor-in-interest of M/s. P.M Diesels Ltd. in the year 1963, which is reflected in the Certificate of Registration as also the advertisement in the Trade, Journal dated 1.4.65

22. The plaintiff has suppressed information with regard to the previous litigation with M/s. P.M Diesels Ltd. and has placed reliance on duplicate documents. The predecessor-in-interest of the defendant No. 1 started using the trade mark without being the registered owner. The law is well settled that he who seeks equity must do equity and unless a plaintiff comes to the Court with clean hands, he cannot get relief by way of injunction. Reference in this regard can be made to the case Basheshar Nath v. Municipal Committee, Moga (AIR 1940 Lahore 69) and J.M Bhambani v. Indian Overseas Bank etc. (1979 R.L.R (Note) 40). A party coming to the Court and suppressing material facts even otherwise is not entitled to the equitable relief of injunction.

23. The case of the defendants has been that they have been using the trade mark ‘Field Marshal’ and such use is honest and open.

24. Considering all the facts, I am clearly of the view that the plaintiff is not entitled to the equitable relief of injunction.

25. In view of my aforesaid discussion, the application IA. 12345/92 is dismissed and stay order dated 1.10.1992 stands vacated. Consequently, S. No. 13703/92 stands allowed. It is, however, made clear that observations made in this order are only for the disposes of disposal of this application and would have no bearing on the final decision in the Suit, which would be decided on the basis of evidence that may be led by the parties.