A Division Bench of the Delhi High Court on 4-1-2017 has set aside the decision of the Single Judge and returned the plaint on the grounds that the Plaintiff No. 2 being a ‘permitted user’ as defined under Section 2(1)(r)(ii) of the Trade Marks Act, 1999 could not have instituted the suit by virtue of Section 52 of the Trade Marks Act, 1999. The Court hence rejected the view of the Single Judge that the second plaintiff being the permitted user, the ‘person’, as referred to in Explanation to Section 134(2) of the Trademarks Act, can institute an infringement suit.
The Division Bench in this regard however agreed with the view of the lower court that the definition of ‘person’ was indeed an inclusive one and that it cannot be restricted to the ‘registered user’ and the ‘registered proprietor’. It observed that Section 134(2) could apply to infringement suits by any person other than the registered proprietor and the registered user, only if it was permitted by other provisions in the Act.
The Court opined that the only persons who can bring a suit for infringement of a trade mark would be the registered proprietor himself or the registered user and certainly not a permitted user because of the express prohibition under Section 53. The Court was also of the view that if the word ‘person’ would include a permitted user, then it would mean that while on the one hand Section 53 bars such a person from instituting any proceeding for infringement, Section 134(2) would regard him as a person instituting the suit.
The Court was also of the view that Delhi High Court did not have the territorial jurisdiction to entertain the instant suit as the cause of action in the case of P.K. Sen v. Exxon Mobile Corporation was in Kolkata where the defendant was present.