Kerly recognizes the possibility of a situation where, before commencement of use of a registered trade mark by the registrant(A), another person(B) uses an identical mark, for identical goods, without registration and acquires goodwill. Kerly states, an impasse results, in which A can injunct B’s use on infringement and B can injunct A’s use on passing off.

Jain Industries is the proprietor of the trade mark ‘FIELD MARSHAL’ since 1965. Jain Industries assigned the mark to Thukral Mechanical Works in 1986. PM Diesels Private Limited does not hold any registration of the mark ‘FIELDMARSHAL’. It, however, commenced using the mark for centrifugal pumps in 1975. By 1988, when Thukral Mechanical Works started using its registered ‘FIELD MARSHAL’ mark for centrifugal pumps, PM Diesels Private Limited had acquired substantial goodwill and reputation.

PM Diesels Private Limited would stand permanently injuncted from further use of the ‘FIELDMARSHAL’ mark for centrifugal pumps.

– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Thukral Mechanical Works v. PM Diesels Private Limited, [LPA 320/2024] reserved on 01.11.2025-decided on 06.02.2026.

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The definition of “bona fide use” has been expanded by cases to cover even pre-sale commercial activities. “Mere advertisements” that arrive before the goods themselves exist in the market were considered a valid “use” of the mark. Nevertheless, the reason why discussions on Thukral Mechanical Works are warranted is, there are still lacunae, like the impasse as envisioned by Kerly as early as 1894, left for exploring by both Courts and Academics.

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What Next?

At the recent European Union Intellectual Property Office Conference, 2023 held in Spain, a Panellist Judge stated with conviction, “There is no IP dispute that cannot be mediated. If the parties want to, they can mediate anything.”

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Thukral Mechanical Works v. PM Diesels Private Limited, Special Leave Petition (Civil) No. 9593 of 2026

25.03.2026 – To facilitate parties to arrive at an amicable settlement, we appoint Hon’ble Mr. Justice S. Ravindra Bhat, Former Judge of this Court, as Mediator.

01.09.2026 – List on 13.10.2026.

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Retd. Justice S. Ravindra Bhat was also appointed a Mediator in Shri Jain Swetamber Shri Sangh Panjikrit Sanstha v. State of Rajasthan, Special Leave Petition (Civil) No. 25759 of 2023 and Rinku Baheti v. Sandesh Sharda, Transfer Petition (Civil) No. 278 of 2023. Do note, Retd. Justice S. Ravindra Bhat has been Chairperson of a ‘High-Powered Sale Committee’ in Balasaheb Keshawrao Bhapkar v. Securities and Exchange Board of India, Writ Petition (Criminal) No. 546 of 2023; a ‘National Task Force’ in Amit Kumar v. Union of India, Criminal Appeal No. 1425 of 2025; and a ‘High-Powered Committee for Reform and Governance of Open Correctional Institutions’ in Suhas Chakma v. Union of India, Writ Petition (Civil) No. 1082 of 2020.

Will we have an opportunity to read on how Retd. Justice S. Ravindra Bhat mediated Kerly’s impasse? Meanwhile, I acknowledge Advocate, Akshit Soni’s research.