The central legal point established in the judgment is the interpretation of the rights of permitted users to institute infringement suits and the application of the inclusive definition of 'person' in Section 134(2) of the Trade Marks Act, 1999.

Badar Durrez Ahmed, J.

1. The present appeal raises the question of territorial jurisdiction of this court in entertaining the suit filed by the respondents. The appeal arises out of the judgment and/or order dated 22.07.2016 delivered/passed by a learned single Judge of this court in IA No.20626/2015 which was filed by the appellant herein (defendant) under Order VII Rule 10 and Order VII Rule 11 of the Code of Civil Procedure, 1908 (hereinafter referred to as ‘the CPC’). The application was dismissed and the learned single Judge held that this court had territorial jurisdiction to entertain the suit which was one of infringement of trademark.

2. Before we proceed any further, it would be appropriate to identify the parties. The respondent No.1 was the first plaintiff and is a corporation/company incorporated in USA. It has no office in India and by itself does not carry on any business in India. It is the registered proprietor of the trademark ‘EXXON’ in respect of various goods and services. The respondent No.2/plaintiff No.2 is said to be a wholly owned subsidiary and is registered as a company under the Companies Act, 1956 in India. Its registered office is in Delhi and it carries on business, inter alia, in Delhi. The respondent No.2/plaintiff No.2 is claimed to be the permitted user of the ‘EXXON’ trademark and name in India through a trademark licence agreement entered into between the two respondents on 13.04.2010.

3. The appellant/defendant is the proprietor of ‘EXON Engineering Corporation’ and his offices are located in Kolkata.

4. The said suit was filed in Delhi on the basis of the averments contained in paragraph 26 of the plaint which read as under:-

‘26. This Hon’ble Court has the jurisdiction to entertain and try the present suit as the second Plaintiff herein has its registered office in New Delhi within the territorial jurisdiction of this Hon’ble Court. The second Plaintiff is a subsidiary of the first Plaintiff and the permitted user of the EXXON mark and name in India. By virtue thereof and by virtue of the provisions of Section 134(2) of the Trade Marks Act, 1999, this Hon’ble Court has the territorial jurisdiction to try and entertain the present suit.’

5. From paragraph 26 of the plaint, as reproduced above, it is evident that the suit has been filed in Delhi by seeking to invoke the provisions of Section 134(2) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the said Act’). The said provision has been invoked on the ground that:-

(i) the respondent No.2/plaintiff No.2 has its registered office in New Delhi which is within the territorial jurisdiction of this court;

(ii) the plaintiff No.2/respondent No.2 is a subsidiary of the plaintiff No.1/respondent No.1; and

(iii) the plaintiff No.2/ respondent No.2 is a ‘permitted user’ of the ‘EXXON’ mark and name in India.

6. Before the learned single Judge, it was contended on behalf of the appellant/defendant that this court did not have territorial jurisdiction to entertain the suit for injunction which was essentially a suit for infringement of the said trademark. It was contended that the appellant/defendant carried on business in Kolkata and had no business in Delhi. Furthermore, in view of Section 53 of the said Act, a ‘permitted user’ had no right to institute a suit for infringement and, therefore, the plaintiff No.2/respondent No.2, who was, at best, merely a ‘permitted user’, could not institute any suit and, therefore, could not be a plaintiff or even a co-plaintiff in an infringement action. Consequently, it was submitted that the plaintiff No.2 cannot avail of the facility provided under Section 134(2) of the said Act. It was further contended that the plaintiff No.1/respondent No.1, who was the registered proprietor of the trademark – ‘EXXON’, had no place of business in India.

7. On the other hand, the respondents contended that