The Delhi High Court, in Thukral Mechanical Works v. PM Diesels Pvt. Ltd., held that prior user rights may prevail over statutory trademark registration, recognising the superior goodwill of PM Diesels Pvt. Ltd. in relation to the mark “FIELDMARSHAL” used for centrifugal pumps. The Court affirmed that a party that has built substantial reputation through earlier use may seek protection under passing off, even against a registered proprietor.

The Court considered the competing claims of trademark registration and prior use in relation to the mark “FIELD MARSHAL” used for machinery and pump-related goods. The dispute concerned the parties’ rights over the mark in Class 7 for centrifugal pumps and related equipment.

The mark “FIELD MARSHAL” was originally registered in favour of Jain Industries in 1965. The registration was subsequently assigned to Thukral Mechanical Works in 1986, and the firm was recorded as the registered proprietor in the Register of Trade Marks. PM Diesels Pvt. Ltd., however, had commenced use of the mark “FIELDMARSHAL” for centrifugal pumps as early as 1975 and had built significant goodwill in the market prior to Thukral Mechanical Works commencing commercial use of the mark for pumps in 1988.

The dispute therefore raised a conflict between statutory rights arising from trademark registration and common law rights based on prior use and goodwill. The Court referred to this situation as the well-known “Kerly impasse”, where a registered proprietor may assert an infringement claim while a prior user may simultaneously maintain an action for passing off based on established goodwill.

The Court observed that while registration confers statutory rights enabling the proprietor to institute infringement proceedings, a trader who has developed substantial goodwill through earlier use may seek protection under the common law remedy of passing off.

The judgment thus highlights the coexistence of registration-based rights and goodwill-based rights in Indian trademark law and provides guidance on the interaction between infringement claims and passing off actions.

Source: Thukral Mechanical Works v. PM Diesels Pvt. Ltd., [2026 SCC OnLine Del 445]