SOUMEN SEN, J.

1. In an action for infringement and passing off in relation to trade mark “Exxon”, the petitioners have filed this instant application, praying, inter alia, for an order of injunction restraining the respondent from using its trade name “Exon”.

2. This action was preceded by a suit for infringement filed by the petitioners before the Delhi High Court. In the said proceeding, initially, an order of injunction was passed on 10th August, 2015. The said order was confirmed on 24th August, 2016. The respondent, in the meantime, filed an application before the Delhi High Court for rejection of the plaint, and/or, in the alternative, return of the plaint due to lack of territorial jurisdiction. One of the grounds for rejection was that in view of Section 53 of the Trade Marks Act, 1999, a permitted user had no right to institute any proceeding for infringement. The petitioner No.2, being a permitted user, had no right to institute any proceedings for infringement and thus the petitioner No. 2 could not avail of Section 134(2) of the Trade Marks Act, 1999.

3. The said application was rejected.

4. However, in an appeal preferred by the respondent, the Hon’ble Division Bench in FAO (OS) No.290/2016 & CM No.37465/2016 (P.K. Sen v. Exxon Mobile Corporation & Anr.) reported at 2017 (1) HCC 89 (Del) by a judgment and order dated 4th January, 2017, allowed the appeal and the plaint was returned to the petitioners for filing in the court having jurisdiction in the matter. The Division Bench held that, even if it is assumed that the use of the trade mark by the petitioner No. 2 is the deemed use of the trade mark by the petitioner No. 1, and that the office of the petitioner no. 2 in Delhi is the subordinate/branch office of the plaintiff no. 1, the additional benefit of Section 134(2) of the said Act would not be available to the petitioner No. 1. The petitioners preferred a Special Leave Petition before the Hon’ble Supreme Court. The Hon’ble Supreme Court initially passed an order on 23rd November, 2017, by which the matter was adjourned till 12th December, 2017 in order to enable the learned Counsel representing the respondent to obtain instructions as to whether the respondent would continue not using the mark in a similar manner in future till the application filed by him for registration of the trade mark is decided by the statutory authority. However, subsequently, by an order dated 12th December, 2017, the Special Leave Petition was dismissed. The petitioners were granted three months’ time to represent the plaint before the competent authority.

5. The petitioners have now filed a fresh suit for infringement and passing off on 8th March, 2018 before this Court.

6. Before entering into the arena of disputes as canvassed by the respective parties in their pleadings as well as during arguments, it is necessary to indicate briefly the nature of the dispute.

7. The petitioner No. 1 is a Corporation organized and existing under the laws of the State of New Jersey, United States of America and petitioner No. 2 is an Indian subsidiary of the petitioner No. 1 and is also a licensee/permitted user of the trademarks of the petitioner No. 1 in India. The petitioner No. 1 claims to be one of the largest energy companies in the world. The said company was formed on 5th August, 1882 as the Standard Oil Company of New Jersey. The company thereafter changed its name various times and ultimately came to be known as Exxon Corporation in 1972. Petitioner No. 1 further claims to be a world-renowned leader in chemical, petroleum and related petroleum products. Further, the petitioner No. 1 claims that the word “Exxon” is a coined and invented word, which was selected after a tedious study of old lists of names over the years. The petitioner No.1, at present, claims to be one of the largest publicly traded international oil and gas companies. The petitioner No.1 claims to have a long and outstanding presence in India. The word “Exxon” is r