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Tuesday, June 20, 2017
Permitted User Cannot Institute a Suit for Trademark Infringement, Suit Dismissed by Delhi High Court
The plaintiff/respondent no. 1, Exxon Mobile Corporation, is the registered proprietor of the trademark Exxon and does not have an office in India. Plaintiff no. 2, which is a wholly owned subsidiary of Plaintiff no. 1, has an office in Delhi. And is a permitted user of the mark. A permitted user of the mark is a person who is connected with the goods or services to which the mark relates in the course of trade and is authorized in writing to use the mark.
The defendant is the registered proprietor of the trademark ‘Exon Engineering Corporation’ and has an office in Kolkata.
Relying on Section 134(2) of the Trademarks Act, 1999 (“the Act”), the plaintiff filed the suit in Delhi on the ground that plaintiff no. 2 has an office in Delhi. Since Section 134(2) of the Act empowers a plaintiff to institute a suit for trademark infringement at any place where its office is located, the plaintiffs contended that the Delhi High Court was vested with the jurisdiction to adjudicate upon the matter.
Before the single judge, the Arguments of the plaintiffs were twofold.
First, arguing that Section 52 of the Act empowers a registered user of a mark to institute a suit for infringement, the plaintiffs contended that there was no reason why a permitted user of the mark would not be similarly empowered to institute such a suit.
Second, relying on Section 48(2) of the Act, they contended that the use of a mark by a permitted user would be deemed to be use by the registered proprietor. This being the case, owing to the fact that the permitted user of the mark i.e. plaintiff no. 2 had an office in Delhi, its use of the mark would be deemed to be use of the mark by the first plaintiff in Delhi.
On the other hand, the defendant argued that it was carrying on business in Kolkata, so a court in Delhi would not have jurisdiction to adjudicate upon the matter. Further, in light of the fact that Section 53 of the Act imposes an express embargo on the institution of a suit by a permitted user, plaintiff no. 2 could not have instituted the suit. Finally, since plaintiff no. 1 did not have an office in Delhi, Section 134(2) could not come to its aid.
Ruling in favour of the plaintiffs, the single judge held that the explanation to Section 134(2) of the Act, which delineates the categories of persons who are empowered to institute a suit, must be construed in an inclusive and liberal fashion. This being the case, a permitted user would also fall within the four squares of the term ‘person’ and would, therefore, be empowered to press Section 134(2) into service. Relying on the apex court’s holding in the case of Exphar SA versus Eupharma Labratories, which involved the interpretation of Section 62(2) of the Copyright Act, the single judge held that, in light of the fact that the person instituting the suit i.e. plaintiff no. 2 had an office in Delhi, the suit could go forward. Finally, the single judge also accepted the plaintiff’s contention that plaintiff no. 1 would be deemed to use the mark in Delhi owing to its use by its wholly owned subsidiary.
The defendant-Appellant appealed before the Division Bench against this judgment, resulting in the judgment under consideration.
Decision of Court:
The Court commenced its analysis by noting that the single judge’s reliance on the Exphar case was inapposite in light of the fact that there is a critical difference in the principles governing the construction of the term ‘person instituting a suit’ in the Copyright Act and Trademark Act. More specifically, the terms ‘permitted user’, ‘registered user’, and ‘proprietor of the registered trademark’ are unique to the Trademark Act and are significantly different from and cannot be treated as being on the same footing as an exclusive licensee under the Copyright Act.
Thereafter, on a perusal of the text of Section 53, the Court held that the Section clearly prohibits a permitted user from instituting a suit for infringement.
Noting the difference between a registered user and a permitted user, the Court held that Section 52(1) authorizes a registered user to institute a suit whereas there is no such enabling provision insofar as a permitted user is concerned.
Holding that the term ‘person’ in the explanation to Section 134(2) must be construed as being inclusive, the Court held that it would nonetheless not include a permitted user within its ambit. The opposite conclusion would clearly be contrary to the terms of the enactment, inasmuch as it would authorize the selfsame thing that Section 53 prohibits.
Since plaintiff no. 2 was not legally empowered to institute the suit, the Court next had to decide if it had jurisdiction to adjudicate upon a suit instituted by plaintiff no. 1.
In order to answer this question, the Court relied on its own judgment in the case of Ultra Home Construction versus Purushottam Kumar Chaubey as per which a court has the jurisdiction to adjudicate upon a matter under the special provisions found in Section 134 of the Act and Section 62 of the Copyright Act in 4 different circumstances. Ritvik has covered the ratio of this case here.
Since the plaintiff does not have a principal place of business in India and the cause of action did not arise in Delhi, the Court held that the factual matrix of this case would not fall within the ambit of any of the four circumstances set forth in Ultrahome. On this basis, the Court reversed the single judge’s decision and rejected the plaint for lack of jurisdiction.