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The Delhi High Court again!!!!

The Delhi High Court again!!!!

The trade marks law has expanded from time to time incorporating various changes by way of amendments. Earlier the trade marks law in India was governed by the trade and Merchandise Act, 1958. This Act defined the permitted use as use by a registered proprietor under the Act. But a decision in 1996 the Supreme Court has held that failure to register a licensee under the Act as a registered user does not prohibit a registered proprietor to exercise rights over its own trade mark. The consequence of this case had put the permitted user and the registered user at par with each other, having the same legal sanction.

This change was also included in the new Trade Marks Act, of 1999 which allowed both the registered user as well as the permitted user to use the trade mark other than the registered proprietor. The new Act also incorporated the Section 53 to exclude any permitted user except for the registered user and the registered proprietor to file a suit for infringement under the Act.

Recently section 53 has come onto the surface due to an infringement suit filed by U.S  based EXXON Corporation against Kolkata based EXON ENGINEERING CORPORATION in the Delhi High Court. Here the U.S based Corporation has mas its Indian subsidiary a co-plaintiff which is using the trade mark under the license granted by the Plaintiff.

The defendant has contended that being a licensed user of the trade mark unlike a registered user the co-plaintiff is barred under the Act to file a suit under the section 134(2) of the trade marks Act, 1999. The Delhi High Court has rejected the suit on the ground that jurisdiction cannot be conferred on Indian subsidiary’s place of business. Previously also the Delhi High Court has given its decision on the jurisdictional issues of trade mark, that only a registered proprietor and a registered user is entitled to file a suit of infringement in the Court. Also as the plaintiff has no direct business in Delhi it has no right to file suit under section 134(2) of the Act.

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