Karnataka High Court
Ieee Mumbai Section Welfare … vs Global Ieee Institute For Engineers on 2 July, 2025
1
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
DATED THIS THE 2ND DAY OF JULY, 2025
PRESENT
THE HON'BLE MR V KAMESWAR RAO, ACTING CHIEF JUSTICE
AND
THE HON'BLE MR JUSTICE C M JOSHI
COMMERCIAL APPEAL NO. 181/2025
C/W
COMMERCIAL APPEAL CR NO. 3/2025
IN COMAP NO. 181/2025
BETWEEN:
GLOBAL IEEE INSTITUTE FOR ENGINEERS,
A PRIVATE LIMITED COMPANY
UNDER THE COMPANIES ACT, 1956,
HAVING ITS REGISTERED OFFICE AT:
26/1, 5TH FLOOR, WTC BRIGADE GATEWAY
CAMPUS, DR. RAJKUMAR ROAD,
MALLESWARAM WEST, BENGALURU,
KARNATAKA, INDIA, 560 055,
(REP. BY ITS AUTHORIZED SIGNATORY,
MR. SRIKANTH CHANDRASEKARAN)
...APPELLANT
(BY MR. DHYAN CHINNAPPA, SENIOR COUNSEL ALONG WITH
MS. LAVANYA B ANANTH, MS. SAMRUDDHI CHOTHANI,
MR. ANURAAG IYER PRADIP, ADVOCATES FOR
MR. MOHAMMED SHAMEER, ADVOCATE)
AND:
IEEE MUMBAI SECTION WELFARE ASSOCIATION,
A REGISTERED AS A SOCIETY UNDER THE
SOCIETIES REGISTRATION ACT, 1860 AND
AS A PUBLIC TRUST UNDER THE MAHARASHTRA
PUBLIC TRUSTS ACT, 1950,
HAVING ITS REGISTERED OFFICE AT 104-G,
ALEVIN, MARWAH COMPLEX, SAKI VIHAR ROAD,
ANDHERI (EAST), MUMBAI, MAHARASHTRA,
INDIA, 400 072.
2
AND HAVING ADDRESS AT
C/O. DON BOSCO INSTITUTE OF TECHNOLOGY,
KURLA, MUMBAI, MAHARASHTRA,
INDIA, 400070.
...RESPONDENT
(BY MR. PRADEEP NAYAK, ADVOCATE ALONG WITH MR. ADITYA
CHATTERJEE, MR. Y. SANKEERTH VITTAL AND
MR. AJAY SURESH, ADVOCATES )
THIS COMMERCIAL APPEAL IS FILED UNDER SECTION
13(1-A) OF COMMERCIAL COURT ACT, PRAYING TO SET ASIDE
THE ORDER DATED 12.03.2025 PASSED BY THE HON'BLE
LXXXIV ADDITIONAL CITY CIVIL AND SESSIONS JUDGE,
COMMERCIAL COURT, BENGALURU (CCH-85) IN THE INTERIM
APPLICATION NO.4 OF 2024 FILED BY THE RESPONDENT IN
COMMERCIAL ORIGINAL SUIT NO.906/2024 AND RESTORE THE
COMMERCIAL ORIGINAL SUIT NO.906/2024 TO THE FILE OF
THE HON'BLE COMMERCIAL COURT, BENGALURU.
IN COMAP CR NO. 3 OF 2025
BETWEEN:
IEEE MUMBAI SECTION WELFARE ASSOCIATION,
A REGISTERED SOCIETY UNDER THE SOCIETIES
REGISTRATION ACT, 1860 AND AS A PUBLIC TRUST
UNDER THE MAHARASHTRA PUBLIC TRUSTS ACT, 1950,
PREVIOUSLY HAVING ITS REGISTERED OFFICE AT:
104-G, ACEVIN, MARWAH COMPLEX,
SAKI VIHAR ROAD, ANDHERI (EAST),
MUMBAI, MAHARASHTRA, INDIA 400 072.
CORRESPONDING ADDRESS NOW AT:
B-4/2, NICE, MIDC, SATPUR, NASHIK-422 007,
MAHARASHTRA, INDIA (REPRESENTED BY ITS
AUTHORIZED SIGNATORY MR. ANAND S GHARPURE).
...APPELLANT
(BY MR. PRADEEP NAYAK, ADVOCATE ALONG WITH
MR. ADITYA CHATTERJEE, MR Y. SANKEERTH VITTAL &
MR. AJAY SURESH, ADVOCATES)
3
AND:
GLOBAL IEEE INSTITUTE FOR ENGINEERS,
A PRIVATE LIMITED COMPANY UNDER
THE COMPANIES ACT, 1956,
HAVING ITS OFFICE AT 26/1, 5TH FLOOR,
WTC BRIGADE GATEWAY CAMPUS,
DR. RAJKUMAR ROAD, MALLESWARAM WEST,
BANGALORE, KARNATAKA, INDIA 560 055.
(REP. BY ITS AUTHORIZED SIGNATORY
MR. SRIKANTH CHANDRASEKARAN)
...RESPONDENT
(BY MR. DYAN CHINNAPPA, SENIOR COUNSEL ALONG WITH
MS. LAVANYA B ANANTH, MS. SAMRUDDHI CHOTHANI,
MR. ANURAAG IYER PRADIP, ADVOCATES FOR
MR. MOHAMMED SHAMMER, ADVOCATE)
THIS COMAP.CR IS FILED UNDER ORDER XLI RULE XXII
R/W SEC.13(1-A) OF THE COMMERCIAL COURT ACT, PRAYING
TO SET ASIDE THE IMPUGNED ORDER (ANNEXURE -A) PASSED
BY THE LXXXIV ADDITIONAL CITY CIVIL AND SESSIONS
JUDGE, BENGALURU (CCH-85) (COMMERCIAL COURT ) IN
COM.O.S.NO. 906/2024 IN SO FAR AS IT FAILS TO HOLD THAT
THE COMMERCIAL SUIT IS BARRED UNDER THE TRADEMARKS
ACT, 1999 AND THE RESPONDENT HAS NO CAUSE OF ACTION
TO INSTITUTE THE COMMERCIAL SUIT. AND CONSEQUENTLY
ALLOW I.A.NO.4 OF 2024 FILED UNDER ORDER VII RULE 11
R/W SEC.151 OF CPC, 1908 BY THE APPELLANT IN ITS
ENTIRETY.
THE COMAP AND COMAP CR HAVING BEEN HEARD AND
RESERVED FOR JUDGMENT ON 19.06.2025 AND COMING ON
FOR 'PRONOUNCEMENT OF JUDGMENT', THIS DAY,
C M JOSHI J., PRONOUNCED THE FOLLOWING:
CORAM: HON'BLE MR V KAMESWAR RAO, ACTING CHIEF JUSTICE
AND
HON'BLE MR JUSTICE C M JOSHI
4
CAV JUDGMENT
(PER: HON’BLE MR JUSTICE C.M. JOSHI)
Being aggrieved by the order dated 12.03.2025
passed by the learned LXXXIX Additional City Civil and
Sessions Judge, Commercial Court, Bengaluru, (CCH-85) in
IA No.4/2024 filed by the respondent in Commercial
Original Suit No. 906/2024, the appellant- GLOBAL IEEE
INSTITUTE FOR ENGINEERS, is before this Court in appeal
in COMAP 181/2025. So also, the respondent-IEEE
MUMBAI SECTION WELFARE ASSOCIATION, has filed an
appeal in COMAP CR 3/2025 seeking to set aside the said
order in sofar as it fails to hold that the Commercial suit is
barred under the Trademarks Act, 1999 and that the
respondent has no cause of action to institute the
Commercial Suit and consequently allow I.A.No. 4/2024
filed under Order VII Rule 11 read with Section 151 of
CPC, 1908 in its entirety .
2. The factual aspects of the case as may be found
in the plaint are summarized as below:
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(A) The plaintiff is a Private Limited Company
having its registered Office at Bengaluru and it is a
second tier subsidiary partially owned by IEEE Asia
Pacific Limited and IEEE Worldwide Limited, both of
which are wholly owned by the Institute of Electrical and
Electronics Engineers, Inc., (IEEE). The IEEE Asia
Pacific Limited is domiciled in Singapore and was
registered on 04.01.1994. IEEE Worldwide Limited, is
incorporated in the State of New York on 17.07.2013.
The parent entity of both these subsidiaries was
incorporated at New York on 16.03.1896. All the
companies are not-for-profit companies.
(B) The IEEE, the parent Company, is the World’s
largest Professional Organization engaged in fostering
technological innovation and excellence and was
designed to serve professionals involved in all aspects
of Electrical, Electronic and Computing fields and related
to areas of Science and Technology. They have
publications, organize conferences, set up technology
standards and are engaged in professional and
educational activities.
6
(C) On 13.07.1976, the defendant was established
as IEEE Geographic Unit/Section to further the activities
of IEEE Inc., in Maharashtra, Goa, Madhya Pradesh,
Daman and Diu, and later such units were also
established at Bengaluru and Delhi. Separate guidelines
are set out in IEEE Manuals.
(D) Thereafter, the defendant was registered as a
Society under the provisions of the Societies
Registration Act, 1860, on 28.12.2012 and as a Public
Trust under the provisions of Maharashtra Public Trusts
Act, 1950 (MPT Act, for short) on 19.12.2013, having its
registered office at Mumbai.
(E) On 29.08.2012, a Service Assistance Agreement
came to be executed between the parties setting out
the working relationship to provide professional and
administrative services mentioned therein, with
intention to further the objectives and goals of IEEE.
Another agreement was entered into on 01.04.2013, on
identical lines. These two agreements are the crux of
the matters which are involved in the present lis.
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(F) Under the above said agreements of the year 2012
and 2013, the parties had agreed that the plaintiff
should provide professional and administrative services
interse, subject to the termination of the agreements in
terms of the provisions of Article (ii) thereof. In para 12
of the plaint, the Articles 1.01 and 1.04 of the
agreements are stated to be as below:
“a. Corporate and governance support services i.e., to
collaborate and coordinate the functions of the
Defendant to facilitate compliance of the Defendant to
act solely for the benefit of IEEE and to further the
objectives and goals of IEEE. For these purposes, the
Agreements envisaged that the Plaintiff would liaise
with IEEE on behalf of the Defendant and provide
assistance when requested by, for the Defendant or
for services that the Plaintiff and IEEE think, in their
absolute discretion is necessary and required to
further the goals of IEEE. Further, the Agreements
also contemplated that the Plaintiff must have
express agreement of IEEE prior to providing any
future services to the Defendant;
b. Brand licensing services i.e., under separate
licensing agreements executed between IEEE and the
Plaintiff, IEEE had licensed the use of its brand,
marks, and name to the Plaintiff. Based on the
authority provided in the licensing agreement, IEEE
8through the Plaintiff permitted the Defendant to use
the brand, marks, and name of IEEE, for the purposes
of furtherance of the Agreements; andc. Consideration i.e., to disburse to the Defendant
whatever costs and expenses incurred by the
Defendant for the services rendered under Schedule B
of the Agreements.”
Apart from these, the agreements also included
the services to be rendered by the defendant towards
the plaintiff in compliance of such services that may be
provided by the plaintiff. The defendant was also
obligated to provide all the information that is necessary
for the purpose of the funds disbursed by the plaintiff,
utilized by the defendant in furtherance of the purpose
for which the defendant was set up and the necessary
compliances thereof.
(G) In addition to such compliances, the
agreements also contained a clause wherein, any
material either in tangible or intangible form prepared
and conceived the defendant exclusively for the IEEE
shall be deemed as “work made for hire” as defined and
used in the Copyright Act, 1976 and the IEEE will wholly
9
retain and own all rights in the said materials including
the right of the copyright. The agreements also
envisaged that upon termination of the agreements or
any of the services, each party shall return to the other
all correspondence, assets and documents concerning
the information provided to it by the other.
(H) The plaint alleges that despite the contractual
obligations of the parties having been set out under the
agreements, the plaintiff was met with non cooperation
and non performance of the contractual obligations on
the part of the defendant and as such, there was a
breach. The defendant despite was obligated to provide
periodic financial/audited documents/information to the
plaintiff, it did not do so, which resulted in a letter dated
26.02.2024 by the plaintiff to the defendant calling for
compliances. A spate of correspondence ensued
thereafter and ultimately, the plaintiff issued a legal
notice on 05.04.2024 seeking compliance of the
contractual obligations under the agreements.
Thereafter, there being repudiatory breach of
agreements and continued non cooperation and non
10
compliance, the plaintiff was left with no other way than
to issue a notice of termination dated 02.05.2024 and
communicated the same to the defendant.
(I) As a consequence of the termination, the plaintiff
called upon the defendant to return all the documents,
correspondences, assets and such other acts
necessitated on account of the termination of the
agreements. In addition to it, the defendant was also
informed that the defendant is no longer authorized to
use IEEE name, brand, marks and symbols as
contemplated under Schedule A of the agreements.
(J) The plaintiff contended that IEEE Inc., being the
registered Proprietor of the IEEE Trademark, and that
the plaintiff was licenced to use the brand, marks and
the name of IEEE under the agreement dated
29.08.2012 executed between the IEEE Inc., and the
plaintiff had the authority to permit sub licencing of the
same as per the agreements entered with the
defendant. Because of the termination of the
agreements, the defendant was no longer
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authorized/permitted by IEEE through the plaintiff, to
use the IEEE’s brand, marks and name in any manner
or form whatsoever. The defendant was put to notice
about the same in the termination notice.
(K) Despite the termination of the agreements, the
defendant took no steps in whatsoever manner to see
them desist to use IEEE brand, name and marks in its
communications, documents, website, domain names
etc. Instead, an official of the defendant had addressed
a communication to IEEE Inc., raising issues extraneous
to the performance of the agreements.
(L) The plaintiff alleging that there has been violations
of the terms and conditions of the agreement and also
the violation of the use of the trademark, brand and
name of IEEE, filed the suit against the defendant with
following prayers:
“WHEREFORE, it is most respectfully prayed that this
Hon’ble Court be pleased to pass a judgment and
decree in favour of the Plaintiff and against the
Defendant:
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a. declaring that the Service Assistance Agreements
dated 29 August 2012 and 1 April 2013 executed
between the Plaintiff and the Defendant stand duly
terminated in light of the notice of termination dated
2 May 2024 issued by the Plaintiff (annexed at
Document No. 12 hereto);
b. granting an order of permanent injunction
restraining the Defendant by themselves or through
their agents, servants and/or assigns or any other
person claiming through or under them or acting on
their behalf from using. in any form or manner, the
‘IEEE’ brand, mark or name (more fully described in
the Schedule hereunder) or using the essential and/or
salient features of the registered trademark of the
Institute of Electrical and Electronics Engineers or any
other mark which is deceptively similar to the
registered trademark of the Institute of Electrical and
Electronics Engineers, which infringes/or is likely to
infringe the registered trademark of the Institute of
Electrical and Electronics Engineers or passes off/is
likely to pass off the Defendant’s services as and for
the services of Institute of Electrical and Electronics
Engineers; or from using any indicia whatsoever to
show any association or affiliation or connection of the
Defendant or its services with the services of the
Institute of Electrical and Electronics Engineers;
c. directing the Defendant to pay damages to the
Plaintiff on account of the Defendant’s continued and
unauthorised use of the ‘IEEE’ brand, mark, name,
13
and/or symbols, in an amount to be determined in
these proceedings, as this Hon’ble Court deems fit
and to this end direct the Defendant to render
accounts to the Plaintiff;
d. award costs of the present Suit to the Plaintiff; and
e. grant such further and other reliefs as this Hon’ble
Court may deem fit and necessary in the facts and
circumstances of the present case.”
3. On receiving the summons, the defendant
appeared before the trial Court and filed its written
statement. It also filed IA No.4 invoking the provisions of
Order VII Rule 11 (a) and (d) of CPC contending that there
is no cause of action and that the suit is barred by law.
4. The first contention regarding cause of action
was that the present suit is filed for declaration and
permanent injunction with respect to trademark IEEE
allegedly granted in favour of the plaintiff under Certificate
dated 11.06.2012 and the plaintiff is not the proprietor of
the Trademark IEEE. As such, the cause of action in
respect of violation of the Copyright is hit by Section 53 of
the Copyrights Act. The owner of the Trademark i.e. IEEE
Inc., having not been made a party, the defendant being in
14
use of the Trademark under the IEEE Geographic Unit in
the year 1976, is entitled to use the same unless it is
revoked by IEEE Inc. Therefore, contending that it was the
prior user of the Trademark and that the plaintiff lack locus
to question the same, the suit is liable to be dismissed.
5. The second contention of the defendant is that,
the defendant is a Public Trust, registered under the
Provisions of the MPT Act, 1950, the prior permission of
the Charity Commissioner is required under Sections 50
and 51 of the Act. The plaintiff having not obtained such
prior approval from the Charity Commissioner, the suit is
barred and therefore, the plaint is liable to be rejected.
6. The application was opposed by the plaintiff
contending that Section 50 of the MPT Act, stipulates Twin
conditions for its applicability and the first being, that the
plaintiff must be a person having interest and the second
being, the reliefs claimed in the suit corresponds to reliefs
stipulated under Section 50 of the MPT Act. Both these
conditions being not applicable, there was no necessity of
obtaining the prior approval of the Charity Commissioner.
15
7. It was contended that the matter in dispute is
confined to the obligations imposed upon each other under
the agreements and has got nothing to do with the subject
matter of the defendant-Trust/Association and therefore,
Sections 50 and 51 of the MPT Act are not applicable.
8. Regarding the cause of action, it is contended
that the present suit is not premised on a cause of action
for infringement or passing-off of the Trademark
simplicitor. It is, basically, for breach of the terms and
conditions of the agreements and therefore, such a
contention is not permissible. It is further contended that
the question whether the plaintiff is the authorized licencee
to use the Trademark IEEE, is a matter which relates to a
fact. Therefore, when the cause of action is a mixed
question of law and facts, it cannot be decided now. It is
contended that the agreements contemplated the use of
the Trademark IEEE so far as the agreements were in force
and after the termination of the agreements the use of
such Trademark by defendant is impermissible. The
contentions of the defendant cannot be gone into without
16
reference to the ascertainment of a fact and therefore, the
second contention is also not permissible.
9. After hearing the arguments, the trial Court by
impugned order held that the suit pertains to claiming an
institutional right but not a individual right against the
defendant-Trust and therefore, the plaintiff should have
obtained permission under Sections 50 and 51 of the MPT
Act, in as much as Sec 50 speaks of persons but not
institutions. Therefore, it held that the suit is barred by law
and the plaint is liable to be rejected under order VII Rule
11(d) of CPC. Regarding cause of action, it holds that it is
a mixed question of law and fact and the plaintiff being the
dominus litus is liable to prove that there existed a cause
of action for filing the suit. As such, there can be no
rejection of the plaint under order VII Rule 11(a) of CPC.
10. Being aggrieved by the rejection of the plaint
under Order VII Rule 11(d) of CPC, the plaintiff has
approached this court in appeal. The defendant being
aggrieved by the finding on the cause of action and Order
17
VII Rule 11(a) of CPC, has approached this court by filing
Cross appeal.
11. It is to be noted that the appellant, in this
appeal, had filed an application under order 39 Rule 1 and
2 CPC seeking temporary injunction against the defendant
to restrain him from using the IEEE Trademark, name,
brand etc., on the ground that before rejection of the
plaint, an order of temporary injunction was in force. This
Court, by order dated 15.04.2025 granted temporary
injunction. The same was taken to the Supreme Court in
Civil Appeal 7235/2025 and the Apex Court held that when
there was rejection of the plaint, there was no suit which
was pending and as such, there was no such continuation
of the proceeding and consequently, without revival of the
plaint, injunction could not have been granted. It also
directed this Court to dispose of the matter expeditiously.
12. We have heard the arguments by Mr. Dhyan
Chinnappa, learned Senior Counsel along with Ms.Lavanya
B. Ananth, Ms. Samruddhi Chotdani, Mr. Anuraag Iyer and
Mr. Pradip for Mohammed Shameer, for appellant and Mr.
18
Pradeep Nayak along with Aditya Chatterjee and Y.
Sankeerth Vittal and Mr. Ajay Suresh, for respondent.
The Submissions:
13. The learned Senior Counsel Mr. Dhyan
Chinnappa, appearing for the appellant submitted that the
impugned order of the trial Court is misconceived and as
such, is not sustainable. His submissions are as below:
(a) The learned trial Judge has failed to appreciate
that in adjudicating an application under order VII Rule
11 of CPC, he should have considered only the
averments in the plaint read with the documents filed
therewith and nothing else. Instead, the learned trial
Judge has proceeded to decide the rejection of the
application based on the defence taken by the
defendant which approach is legally untenable. In this
regard, he relied on the judgment in the case of Sopan
Sukhdeo Sable and others Vs. Assistant Charity
Commissioner and others1; The Trust of Sri Laxmi
Narayan Dev Temple and its Subordinate Temple and
others Vs. Ajendrapasadji Narendraprasadji Pande
1
(2004) 3 SCC 137
19and another2 and Shri Nijanand Jogani Abhiyan Trust
Vs. Parshottam Narsinhbhai Patel and others3 .
(b) It is submitted that the impugned order has
incorrectly recorded the facts pertaining to the
description of the parties and their entitlement under
the suit. It is contended that the plaintiff is the licensed
owner of IEEE Trademark, whereas, the registered
Proprietor is IEEE Inc. It is pointed out that the trial
Court has not properly considered the relationship
between the plaintiff and IEEE Inc., and the plaintiff
nowhere refers to anyone purportedly associated with
the defendant as its Trustees.
(c) The trial Judge has failed to appreciate the
requirement envisaged under Section 50 of the MPT Act.
It is contended that the provisions of Sections 50 and
51 of MPT Act, would come in play only when the suit is
filed by “a person having an interest” in the Public Trust
and the reliefs claimed in the suit correspond to the
reliefs stipulated under Section 50 of the MPT Act. It is
contended that the plaintiff does not fall within the
2
2013 SCC Online Gujarat 8716
3
2024 SCC Online Gujarat 3043
20
definition of a “person having an interest” in the
defendant under Section 2(10) of the MPT Act. The trial
Judge failed to appreciate that the plaintiff is neither
member nor a trustee or beneficiary of the defendant
and therefore, does not fall within the definition
envisaged under Section 2(10) of the MPT Act.
(d) Further, the trial Court has failed to appreciate
that a reading of the plaint makes it evident that the
interest of the plaintiff relates to its contractual rights
alone and it was seeking remedies in respect of the
defendant’s failure to comply with the termination
notice. Such interest has nothing to do either with any
public functions of the defendant or its administration in
any manner and involves no element of public interest.
Therefore, an entity seeking to enforce its private/civil
or contractual rights in relation to the defendant, the
plaintiff cannot be covered by the definition of a ‘person
having interest’ as contemplated under Section 50 and
51 of the MPT Act. In this regard, he relied on the
judgments in the case of Vinayaka Dev Idagunji and
21
others Vs. Shivaram and others4; Sanjay S. Patel Vs.
Baroda Cricket Association and others5; Ladhiben,
through L/R Jayaben Ramnikgar Gusai Vs. Trustees of
Machhu Kathiya Chaturvedi Modh Brahaman Gyanti
Bhuj, through Trustees6 and Vidarbha Kshatriya Mali
Shikshan Sanstha by its President vs.Mahatma Fuley
Shikshan Samiti, Amravati7.
(e) He further submitted that the impugned order
failed to consider the second prong of the test under
Section 51 of the MPT Act. It is submitted that the
dispute had arose out of the defendant’s failure to
perform its contractual obligations under the
agreements. Therefore, a suit seeking declaration and
injunction per-se would not attract the requirement of
obtaining prior permission of the Charity Commissioner
within the meaning of Section 50 of the MPT Act. In this
regard, he relied on the judgment of Mahomed Hassan
Samru Vs. Peer Hazarath Diwanshah Dargah Trust
and others8.
4
(2005) 6 SCC 641
5
Appeal from Order No. 546/2014 and other connected matters DD 28.07.2015
6
2019 SCC Online Gujarat 5751
7
1986 Mh. LJ 773.
8
(2002) 6 Bombay CR 253
22
(f) It is submitted that the provisions of Section 50
of the MPT Act are akin to Section 92 of CPC which
require consent of the Court to institute a suit. The
object of Section 50 of MPT Act, being to protect public
interest in the Public Trust and the objective is not to
deal with the contractual or private disputes between
the parties.
(g) He further submits that the trial Court erred in
holding that the plaintiff was seeking adjudication of an
institutional right. Nowhere, the plaintiff had sought to
canvass an institutional right and that it cannot be
distinguished as personal or private right of the plaintiff.
Even though the plaintiff is a Corporate entity, is
governed by same principles as a private individual
when determining the requirement for permission under
Sections 50 of the MPT Act. The term ‘Private Rights’,
means the rights which are private in nature and which
are not connected to administration of a Public Trust.
Therefore, the interpretation of the ‘Private Right’ to
mean a private right of an individual and drawing a
distinction between ‘institutional right’ and ‘a private
23
right’ is erroneous. It is submitted that the trial Court
ought to have considered whether the suit pertains to
the administration of and or protection of the public
interest in a public trust before concluding as to
whether the prior consent of the Charity Commissioner
was essential. In this regard, he places reliance on the
judgment in the case of Maharashtra Shetkari Seva
Mandal Vs. Bhaurao Bayaji Garud9; Navyug Co-
operative Housing Society Ltd., and another vs. Vile
Parle Kelavani Mandal and another10; and Ramadevi
Haribux Garodia and others Vs. International Society
for Krishna Consciousness (ISKCON)11 and also the
judgments referred supra.
(h) So far as the contentions of the defendant in its
Cross Appeal are concerned, he submits that upon
registration of IEEE Trademark, the scope and extent of
usage thereof was formalized and provided in the
agreements and the defendant’s usage of the trademark
was governed by the agreements. In other words, upon
entering into agreements, any prior right of the
9
2010(2) Mh.L.J 612;
10
2005 SCC Online Bombay 292
11
2017 SCC Online Bombay 9563
24
defendant to use the IEEE trademark came under the
purview of the agreements and therefore, it is only the
terms and conditions of the agreements which are
relevant. The plaintiff is seeking relief on account of
termination of the agreements but not a relief based on
the infringement of the trademark. In this regard, he
placed reliance on the judgment in the case of Gujarat
Bottling Co.,Ltd. and others Vs. Coca Cola Co. and
others12, and Rob Mathys India Pvt. Ltd. Vs. Synthes
Ag Chur13; K. E. Burgmann A/S Vs. H.N. Shah and
another14.
(i) For these reasons he seeks indulgence of this
court to set aside the impugned order and to restore the
suit filed by the plaintiff for adjudication.
14. Per contra, learned counsel appearing for the
defendant made his submissions as under:
(a) He contended that the trial Court has correctly
appreciated that the suit is the one that deals with the
administration of a registered Public Trust. He submits
12
(1995) 5 SCC 545
13
1997 SCC Online Delhi 516
14
2001 SCC Online Delhi 1054
25that the plaint averments show that the plaintiff is
admittedly, a wholly owned stepdown subsidiary of IEEE
Inc., whereas the defendant is geographical
chapter/Section under the aegis of the IEEE Inc. In
effect, both the plaintiff and the defendant are the
entities falling under the ambit of IEEE Inc., and belong
to the same group and structure of IEEE Inc.
(b) He submits that the averments in the plaint
make it clear that the plaintiff exercises significant
operational and financial control over the activities of
the defendant and therefore, the suit is in respect of the
administration of the Trust.
(c) It is pointed out that para 6,10 to 15 of the
plaint shows that under the agreements, the plaintiff
would control the administration and functions of the
defendant to further its object, views and goals of the
plaintiff relates to control of the administration of the
public charitable trust. The funding of the activities of
the defendant is by the plaintiff and in turn, the
defendant is required to provide the accounts.
26
(d) A reading of the plaint would make it clear that
the plaintiff’s entity was incorporated solely to support
and fund the associates and subsidiaries of IEEE Inc.,
which includes the geographical chapters/sections of
IEEE Inc., in India, including the Bombay Section.
Therefore, it is clear that the functioning of the
defendant was completely reliant of the plaintiff and it
squarely falls under the definition of “a person having
interest” as provided under Section 2(10) of MPT Act.
(e) He submits that the Apex Court in the case of
Shree Gollaleshwar Dev and others vs. Gangawwa
Kom Shantayya Math and others15, held that
subsequent to the amendment brought to Sec.2(10) of
MPT Act, the definition of “a person having an interest”,
has now been made an inclusive definition. Therefore,
such inclusive definition seeks to bring within its scope
persons like the plaintiff who exercise substantial
interest and control over a Trust.
(f) He submits that a meaningful reading of the
plaint shows that the suit is relating to infringement of
15
(1985) 4 SCC 393
27
trademark, infringement involving the very name and
identity of the defendant’s Trust, which is used by it
since 1976. Therefore, the prayers sought squarely fall
within the scope of Section 50 of the MPT Act, requiring
the consent of the Charity Commissioner.
(g) He submits that the Trademark IEEE is the
property of the defendant, having been used since 1976
and it is also the name of the defendant. The suit for
declaration and injunction specifically fall under Sub-
Clause (iv) and (p) of Section 50 of the MPT Act. In this
regard, he relies on the judgment in the case of Church
of North India Vs. Lavajibhai Ratanjibhai and
others16.
(h) He submits that the suit seeks an action for
infringement of the trademark owned by IEEE Inc and it
is trite law that the trademark rights are rights in rem
and not rights in personum. The suit seeks reliefs
directly affecting the Trust’s name structure and
operation and if that does not amount to matter
16
(2005) 10 SCC 760.
28
pertaining to the administration of the Trust, nothing
else will.
(i) Contending that there is a bar under 52 and 53
of the Trademark Act 1999, it is submitted that the
provisions require that only a registered proprietor or a
registered user can institute the action for infringement.
A permitted user, such as, licencee is barred from
instituting a suit for infringement. In this regard he
places reliance on the judgment in the case of P.K. Sen
Vs. Exxon Mobile Corporation and another17 and
Ultratech Cement vs. Dalmia Cement Bharat Limited18.
(j) He submitted that the plaintiff has not produced
the Trademark Registration Certificate as required
under the Trademark Rules and it was only after the
defendant filed his defence that the Certificate was
produced along with an application (IA No.5) under
Order VI Rule 11 of CPC. Even if we peruse these
documents, the plaintiff had no valid registration, was
not a registered user or proprietor of the Trademark.
The prior use of the Trademark by IEEE Inc., was only
17
2017 SCC Online Delhi 6393
18
2015 (2) ABR 496
29
from the year 2000, but the defendant has been using
IEEE mark since 1976 and is therefore, a prior user.
Therefore, no action can be brought against the
defendant alleging infringement.
(k) He contends that the contention of the plaintiff
that he is pursuing contractual right and not a statutory
right is only an absurd and illogical contention. Relying
on the judgment in the case of Haldiram Bhujiawala
and another Vs. Anand Kumar Deepak Kumar and
another19 it is argued that the suit is to be treated as
one based on statutory right and not a suit arising out
of the contract.
(l) Even assuming that the suit is in relation to a
contractual right, even then the suit is barred under
Section 34 of the Specific Reliefs Act, as there is no
legal character to a property that is arising out of the
service agreements, which the plaintiff is entitled to.
Therefore, no suit or declaration can lie. In this regard,
he relies on the judgment in the case of Ramnarayan
19
(2000) 3 SCC 250
30
Shrinarayan Agarwal vs. Mangeram Radheshyam
Hardoi20.
(m) It is submitted that the declaratory relief
allegedly arising out of contract is inserted solely to
circumvent the bar on suit for infringement and such
suit for infringement being hit by Section 53 of the
Trademarks Act, the suit was not maintainable for want
of cause of action.
(n) Therefore, he contends that suit is barred under
Sections 50 and 51 of the MPT Act, the plaintiff has no
cause of action or locus standi under the Trademarks
Act and as such the suit is an abuse of process of law.
15. In the light of the above submissions,
substantially, two points arise for consideration. The first
being, Whether the suit filed by the plaintiff falls within
the scope of Section 50 and 51 of the MPT Act, requiring a
prior permission of the Charity Commissioner? The second
being, the cause of action being related to the
infringement of the Trademark/passing off, is not
20
1978 SCC Online MP 99
31
maintainable in view of section 53 of the Trademarks
Act,1999.
A. Reg: Section 50 and 51 of MPT Act:
16. The first aspect to be considered by us is, the
bar contained in Sections 50 and 51 of the MPT Act. The
law on this aspect is fairly settled. To appreciate this
aspect, it is necessary to understand who a “person having
interest” in a Trust is.
17. Section 2 (10) of the MPT Act, after its
amendment, reads as below:
2 (10) “person having interest” includes–
(a) in the case of a temple, person who is entitled
to attend or is in the habit of attending the
performance of worship or service in the temple, or
who is entitled to partake or is in that habit of
partaking in the distribution of gifts thereof,
(b) in the case of a math, a disciple of the math or a
person of the religious persuasion to which the
math belongs,
(c) in the case of a wakf, a person who is entitled to
receive any pecuniary or other benefit from the
wakf and includes a person who has right to worship
or to perform any religious rite in a mosque, idgah,
imambara, dargah, maqbara or other religious
institution connected with the wakf or to participate
in any religious or charitable institution under the
wakf,
32
(d) in the case of a society registered under the
Societies Registration Act, 1860, any member of
such society, and
(e) in the case of any other public trust, any trustee
or beneficiary,”
(emphasis by us)
18. It is pertinent to note that in order to come
within the scope of a ‘person having interest’, such person
may be a beneficiary of a Temple, Mutt, Wakf etc., and
may also be one of the Trustee. In order to attract Section
50 of the MPT Act, the person bringing the suit must fall in
the category of ‘person having an interest’. By virtue of the
amendment to the Act, the word ‘means’ was replaced by
‘includes’ and a inclusive definition was adopted.
19. With this background, it is necessary to look into
the provisions of Sections 50 and 51 of MPT Act, which
read as below:
“50. Suit by or against or relating to public
trusts or trustees or others.–
In any case,–
(i) xxxxx
(ii) xxxxx,
(iii) xxxxx
33
(iv) for any declaration or injunction in favour
of or against a public trust or trustee or
trustees or beneficiary thereof,the Charity Commissioner after making such enquiry
as he thinks necessary, or two or more persons
having an interest in case the suit is under sub-
clauses (i) to (iii), or one or more such persons in
case the suit is under sub-clause (iv) having
obtained the consent in writing of the Charity
Commissioner as provided in section 51 may
institute a suit whether contentious or not in the
Court within the local limits of whose jurisdiction the
whole or part of the subject-matter of the trust is
situate, to obtain a decree for any of the following
reliefs :–
(a) xxxxx;
xxxxx
(p) declaring or denying any right in favour of
or against a public trust or trustee or trustees
or beneficiary thereof and issuing injunctions
in appropriate cases; or
(q) granting any other relief as the nature of
the case may require which would be a
condition precedent to or consequential to any
of the aforesaid relief or is necessary in the
interest of the trust:
Provided that, no suit claiming any of the
reliefs specified in this section shall be instituted in
respect of any public trust, except in conformity
with the provisions thereof:
Provided further that, the Charity
Commissioner may instead of instituting a suit make
an application to the Court for a variation or
alteration in a scheme already settled:
Provided also that, the provisions of this
section and other consequential provisions shall
apply to all public trusts, whether registered or not
34or exempted from the provisions of this Act under
sub-section (4) of section 1.
51. Consent of Charity Commissioner for
institution of suit.–
(1) If the persons having an interest in any public
trust intend to file a suit of the nature specified in
section 50, they shall apply to the Charity
Commissioner in writing for his consent. If the
Charity Commissioner after hearing the parties and
making such enquiries (if any) as he thinks fit is
satisfied that there is a prima facie case, he may
within a period of six months from the date on
which the application is made, grant or refuse his
consent to the institution of such suit. The order of
the Charity Commissioner refusing his consent shall
be in writing and shall state the reasons for the
refusal.
(2) xxxxx
(3) xxxxx
(4) xxxxxxx”
(emphasis by us)
20. In the case of Sopan Sukhdeo Sable v.
Assistant Charity Commissioner and others – (2004) 3 SCC
137, Supra, the Apex Court held that when the question of
landlord and tenant is involved, between the plaintiff and
the Trust, that would not come within the purview of the
provisions of Section 50 of the MPT Act. In coming to such
conclusion, it was noticed as below:
35
“22. xxx…. a reading of the plaint and the reliefs along
with the contents of the plaint goes to show that the
main dispute relates to the question of continuance of
tenancy and the period of tenancy. They are in
essence unrelated with the other reliefs regarding
enquiry into the affairs of the Trust.
xxx xxx.
The question of tenancy cannot be decided under
Section 50 of the Act. Section 51 is applicable only to
suits which are filed by a person having interest in the
trust. A tenant of the trust does not fall within the
category of a person having an interest in the trust.”
21. In the case of The Trust of Shri Laxmi Narayan
Dev Temple v. Ajendrapasadji Narendraprasadji
Pande,(2013 SCC OnLine Guj 8716) it was held that there is
no requirement of a plaintiff to plead the performance of a
condition precedent for obtaining leave from the Charity
Commissioner in terms of Section 50 of the Trusts Act in
the plaint. Similar view was reiterated in the case of Shri
Nijanand Jogani Abhiyan Trust v. Parshottam
Narsinhbhai Patel, 2024 SCC OnLine Guj 3043.
22. In the case of Maharashtra Shetkari Seva Mandal
v. Bhaurao Bayaji Garud, 2010 SCC OnLine Bom 166 it was
held that declaration and injunction sought by the plaintiff
36
relate to his contention about his title to the suit property
and apart from this the plaintiff is not “a person having
interest” as defined under section 2(10) of the Act.
23. In the case of Vinayaka Dev, Idagunji v.
Shivaram, (2005) 6 SCC 641, a suit for declaration that the
plaintiffs were hereditary Archaks in the temple entitling
them to a share in the offerings made to the deity was
filed. Consequential reliefs were also prayed for restraining
the defendants from interfering with the plaintiffs’ rights.
The Trust pleaded that the temple was a public trust
registered under the Bombay Public Trusts Act21 and since
statutory permission of the Charity Commissioner as
required under sections 50 and 51 of the Act was not
obtained, a suit was not maintainable. The Apex Court
considered whether a suit to establish a right to be
hereditary Archaks in a temple and a share in the offerings
made to the deity is a suit in relation to the
personal/private right of the Archak or in the nature of
exercising of public right in a public trust. In paragraphs
13 and 14, the Court has observed as follows:
21
Bombay Public Trusts Act, which is in pari materia with MPT Act was
applicable for North Karnataka at relevant period.
37
“13. What is to be seen is the relief the plaintiffs are
seeking from the court. First of all, they are seeking a
declaration about their hereditary right as archaks of
the Temple. This right is claimed in their personal
capacity as a family of archaks who have been
performing the functions of archaks since the day the
Temple was established and the deity was
consecrated. It is a different matter whether ultimately
the plaintiffs’ contention is accepted by the court or
not. Surely, the plaintiffs are entitled to have their
claim examined by the court. If they fail to establish
their claim, they will be out of the court. However, if
they succeed in establishing the claim they will be
entitled to the declaration sought. They cannot be non-
suited at the threshold unless the suit is expressly
barred by any statute. We have seen the provision of
Section 50 of the Bombay Public Trusts Act relied upon
by the appellant-defendants. The said section does not
cover a suit of the present type. Analogy has been
drawn of Section 92 of the Code of Civil Procedure
while considering Section 50 of the Bombay Public
Trusts Act. Both provisions are in the nature of
representative suits which pertain to public trusts and
protection of public interest in the trusts. In the
present case, there is no public interest involved. The
only interest is that of the plaintiffs and their families.
The right of archakship is claimed on the basis of
inheritance. It is a hereditary personal right which they
want to establish. The right is purely of a private
nature. We are of the view that Section 50 of the
38Bombay Public Trusts Act is not attracted at all in the
facts of the present case.
14. We have seen the object of the Bombay Public
Trusts Act. Appropriately the Act seeks to regulate and
make better provision for the administration of public
religious and charitable trusts. Such trusts cater to
things of public interest i.e. things which concern large
sections of the public. Unless such trusts are properly
administered public interest will suffer. Therefore,
matters affecting administration of such trusts are
covered under Section 50 of the Bombay Public Trusts
Act. This situation is somewhat similar to suits under
Section 92 of the Code of Civil Procedure. These suits
are suits in representative capacity and pertain to
matters of public interest. In contrast the suit which
has given rise to the present appeal is a suit to
establish an individual right. The plaintiffs claim that
they are hereditary archaks of the Temple since time
immemorial and are entitled to exercise this right
which cannot be taken away from them. No public
interest is involved. Public is not concerned
whether A acts as an archak or B acts. Such a suit,
therefore, cannot be covered by Section 50 of the Act.
Law is settled on this aspect as per various judgments
of this Court.”
24. In the case of Sanjay S Patel vs Baroda Cricket
Association-Appeal from Order No.546/2014, supra, it was
observed by Allahabad High Court as below:
39
“13. The entire suit thus was for the purpose of
enforcing the Plaintiff’s personal right. It had no
element of any interest of the public trust. In plain
terms the Plaintiff asserted his civil right to continue to
hold an elected post till the term was over or till he
was legally and validly removed from such position. His
suit and the ultimate reliefs had no connection with the
administration of the Public Trust. It may be that if any
two or more beneficiaries under the Trust had also
found it necessary to challenge such a decision of the
Managing Committee having any element of
administration of the Public Trust, they after making
out such a case should have applied to Charity
Commissioner for his consent in writing in terms
of Section 50 of the Act. This is however not the same
thing as suggest that even when the Plaintiff questions
such a decision before the Civil Court, it necessarily
had an element of administration of the Public Trust.
This would be for two reasons; firstly the challenge by
any of the beneficiaries if they find that the removal of
the Secretary had any effect on the administration of
Trust and the grievance of the Secretary to his removal
and his assertion of his own personal and civil right to
continue to hold the said position till the term was over
would not be mutually exclusive. Secondly if the
Plaintiff’s rights were to be examined only within the
parameters of Section 50 of the Act, such right can be
asserted only by the beneficiaries who must be
minimum two in numbers. In other words therefore the
Plaintiff would have no individual or independent right
40to question a decision palpably adverse to him and this
would leave the Plaintiff without any remedy
whatsoever, an interpretation court would as far as
possible avoid”.
25. In the case of Ladhiben, vs Trustees of Machhu
Kathiya Chaturvedi Modh Brahaman Gyanti Bhuj, Thru.
Trustees – 2019 SCC Online Gujarath 5751, supra, it was
held as below:
“8. It is misconception on the part of the learned
Counsel for the appellant to submit that since the
property belonging to the trust is sought to be
recovered, the suit concerns the administration of the
public trust. Learned Counsel for the appellant drew
attention of this Court to clause (iii) of Section 50
which contemplates the prior consent of the Charity
Commissioner for filing a suit. Conjoint reading of
clause (iii) of Section 50 with sub-clause (a) of Section
50 would make it clear that consent of Charity
Commissioner to file a suit would be necessary if
possession of property is required for the purpose of
administration of public trust; and the provision would
not apply where the suit is not connected with the
public trust.”
26. In the case of Mahomed Hassan Samru v.
Peer Hazarath Diwanshah Dargah Trust -2002
41
SCC OnLine Bom 274, it was held that the twin condition
contemplated u/s 50 of MPT Act is to be satisfied and the
relief at clause (q) alone cannot be considered in isolation
of other reliefs for the purpose of invoking the bar.
27. In the case of Navyug Co-op. Housing Society Ltd.
v. Vile Parle Kelavani Mandal, 2005 SCC OnLine Bombay 292
supra, it was observed as below.
“11. Perusal of the above quoted provisions of section
50 of the Act shows that in order to attract the
provisions of section 50 of the Act, it must show in the
plaint that there are allegations regarding breach of a
public trust, negligence, misapplication, misconduct on
the part of the respondent. No such allegations are
found in the present plaint.
xxxx
In the result therefore, both the issues are answered in
the negative. It is held that neither the provisions of
section 33 of The Maharashtra Rent Control Act, nor
the provisions of section 50 of The Bombay Public Trust
Act, bar the jurisdiction of this Court to entertain this
suit.”
42
28. In the case of Ramadevi Haribux Garodia v.
International Society for Krishna Consciousness,-2017
SCC OnLine Bom 9563, supra, it was held that :
“26. Though the trust is a legal entity, it functions
through its members, trustees and officials. In suit under
section 6 of the Specific Relief Act, the trust seeks
restoration of its civil rights, therefore, the permission of
the Charity Commissioner is not required. The Charity
Commissioner has all supervisory powers and is a
controlling authority of all the public Charitable Trusts.
He has to take care that the object of the trust is not
defeated due to mismanagement, malpractices including
the abuse of the power by the trustees especially when
it pertains to the property and funds of the trust.”
29. In the case of Vidarbha Kshatriya Mali Shikshan
Sanstha v. Mahatma Fuley Shikshan Samiti, 1986 SCC
OnLine Bombay 107 supra, it was held that :
“7. xxxxxx In my view section 50 of the Act is a
section analogous to section 92 of the Code although to
a certain extent as regards the subject matter it may be
wider than it. However, what is most important is that
the definition of the expression “persons having interest”
given in section 2(10) of the Act includes only certain
classes of persons. The suit contemplated by section 50
can be instituted either by the “Charity Commissioner”
or the “persons interested” with his consent. Since all
43persons who want to enforce their civil rights are not
covered by the definition of the expression “persons
having interest” they would be left to the mercy of the
Charity Commissioner or the persons having interest
covered by the definition clause for enforcement of their
private rights if the suit can be instituted only in the
manner as provided in section 50. Even assuming that
such persons are covered by the definition clause, they
would still be at the mercy of the Charity Commissioner
for enforcement of their personal rights. Such a
consequence in my view is not contemplated by section
50 of the Act. The persons who have their own rights to
enforce cannot, therefore, be compelled to follow the
procedure laid down in the said section. A suit to enforce
one’s own civil right instituted under the Code in the
ordinary forum provided for the same is thus competent.
8. It is in this context and interpretation section 50
bare a civil suit in respect of any public trusts for
claiming any of the reliefs specified in the said section
except in conformity with the provisions of the said
section. If the substantive provisions of section 50 of the
Act do not contemplate a suit which is to be filed by a
person for enforcing his own right, then in my view, such
a suit cannot be barred by the first proviso to section 50
of the Act because in its contextual interpretation and
read in the light of the substantive provision, it can only
bar a suit which is contemplated by the substantive
provision. The instant suit filed by the plaintiff for
enforcing its own civil right cannot therefore, be said to
be barred by section 50 of the Act.
44
30. In the case of Shree Gollaleshwar Dev and
others vs. Gangawwa Kom Shantayya Math and
others-(1985) 4 SCC 393 referred supra, by referring to
Section 2 (10) of BPT Act, and also after referring to an
interpretation which was adopted by Full Bench of the
Bombay High Court it was held by the Apex Court that the
scope of Section 50 of BPT Act is wider than that of Section
92 of CPC. It also observed that the definition u/s 2(10)
was enlarged by the amendment which replaced the word
“means” by “includes”. In para 15, the Apex Court
observed as below:
“15. we are unable to subscribe to the view expressed
by the high Court. Although the full Bench rightly
adverted to sub-section (1) of s. 52 of the Act which
excludes the applicability of sections 92 and 93 of the
Code to the public trusts governed by the Act, it is not
right in its conclusion that a suit instituted by the idol
represented by two or more trustees, with the written
consent of the Charity Commissioner as provided in
Section 51 of the Act, was not within the purview of
Section 50(ii)(a) of the Act and therefore could not be
brought in the Court of the District Judge.
Although Section 50 of the Act is structured upon the
pattern of Section 92 of the Code, the Full bench failed
to appreciate that there is no provision in Section 92 of
45the Code analogous to Clause (ii) or relief (a) of Section
50 of the Act. It will be seen from Section 50 that the
section authorizes the institution of a suit by the charity
Commissioner or two or more persons interested in the
trust only in the District Court having jurisdiction to try
it. The scope of Section 50 of the Act is wider than that
of Section 92 of the Code. It applies to a case so long as
the relief claimed falls within the scope of the section.
One of the reliefs that can be claimed in a suit brought
under s. 50 of the Act is that covered by relief (a) set
out in clause (ii) viz. for a declaration that a certain
property belong to a public trust and for possession
thereof from a person holding it adversely to the trust
viz. a suit brought by the Charity Commissioner or two
or more persons interested in the trust with his consent
in writing as provided in Section 51 of the Act.”
Analysis and conclusions on Point A:
31. In view of the above law laid down what
emerges is that the Court has to consider only the
averments made in the plaint and the contentions taken up
therein. The defence of the defendant, his versions, or the
reliances made by him on certain other facts which are not
borne out of the plaint averments cannot be looked into
while considering the provisions of Order VII Rule 11 of
CPC. The meaning of the phrase ‘person interested’
connotes a wider meaning than the one that may be found
46in Section 92 of the CPC. The persons prosecuting their
individual rights, unconnected with the administration of
the Trust need not take the permission of the Charity
Commissioner under Section 51 of the MPT Act. Such
person prosecuting the civil rights are of the kind of
Trustees and beneficiaries and the relief is unconcerned to
the management, internal accounts, administration etc., of
the Trust. In view of the observations made in the case of
Gollaleshwar Dev (supra), the person interested is of the
kind of a Trustee or beneficiary.
32. If we examine the plaint, what emerges is that
the defendant was initially a Unit of IEEE Inc., and started
activities in the year 1976. Popularly, it was known as
Bombay Section of IEEE. Later, in the year 2012, i.e., on
28.12.2012, it formulated the bye-laws and registered as
Society under the Societies Registration Act. The
nomenclature was ‘IEEE Mumbai Section Welfare
Association’. Thereafter, on 19.12.2013, the said
Association was also registered under the provisions of the
MPT Act, 1950. In the meanwhile, the plaintiff and the
defendant entered into the agreements. The first
47agreement, was with IEEE Mumbai Section on 29.08.2012,
which is prior to the defendant’s registration as a Society.
The second agreement dated 01.04.2013, was when the
defendant was incorporated as an Association under the
Societies Registration Act, but prior to it was registered
under the MPT Act, 1950. In other words, when the
agreements were entered into between the plaintiff and
the defendant, the defendant was not a Trust.
33. It is pertinent to note that para 12(a) and 12(b)
of the plaint (reproduced supra) clearly mention the scope
of the agreements and the nature of the services that
were to be performed by the plaintiff at the instance of the
defendant.
34. It must be observed by this Court that, as
mentioned in the plaint, the plaintiff has to liaise with IEEE
on behalf of the defendant and provide assistance when
requested by the defendant. Apart from that, the services
that the plaintiff and IEEE think in their discretion are also
to be serviced by the plaintiff. An understanding of the
above averments in the plaint would show that the
48
agreement would be applicable to the activities and such
other requirements of the defendant, if the defendant
requests to do so. In other words, the defendant would be
at liberty to do any such activity outside the scope of the
agreements. The word ‘requested by’ that may be found
in para 12(a) of the plaint is of importance in this aspect.
35. It is also pertinent to note that the plaintiff had
to provide the support services which the plaintiff and IEEE
inc., would in their discretion, think it is necessary. For all
such services offered and performed, the expenses had to
be borne by the plaintiff, but to be executed through the
defendant. Thus, it is prima facie evident that only those
activities of the defendant falling within the scope of the
agreements or entrusted under the agreements are to be
covered by the plaintiff.
36. To contend that each and every activity and
functions of the defendant are covered by the agreement,
and that such activities and functions are the only goal of
the defendant’s Trust would be a matter of fact, projected
by the defendant. Obviously, such a contention is taken
49
up by the defendant to say that the entire administration
of the defendant- Trust is the subject matter of the suit
and as such, it falls within the scope of Section 50 of MPT
Act. However, the plaint does not mention that the entire
administration of the defendant Trust is the subject matter
of the agreements. Only if there is a request by the
defendant, the services are to be provided by the plaintiff
as may be seen from para 12(a) of the plaint.
37. The perusal of the plaint shows that the plaintiff
had no role in the management, activities, election or
selection of the office bearers, or the events organized by
the defendant-Trust outside the purview of the
agreements. That can only be ascertained if the bye laws
of the Association and the Trust are examined. Obviously,
if we examine the plaint, it does not show that the plaintiff
had taken over the entire administration and management
of the defendant Trust. In that view of the matter, the
plaint does not show that the plaintiff had any interest in
the administration and management of the defendant
Trust in its entirety.
50
38. As observed above, to bring an action
concerning any declaration or injunction in favour of or
against the Public Trust or the Trustee/s or beneficiary
thereof; two or more persons having an interest in case
the suit is for the management of the Trust, or one or
more such persons having an interest in case the suit is for
any declaration or injunction, the consent of the Charity
Commissioner is required.
39. It is pertinent to note that subsequent to the
amendment, the word used is ‘includes’, meaning thereby,
that the definition is not exhaustive. So also, a beneficiary
is also included in clause (e) of Section 2(10). If we
examine the plaint averments in the light of this, it is
evident that the plaintiff has no role to play in the
administration or management of the defendant Trust
since the agreements were prior to the incorporation of the
Trust itself. One of the agreements was even prior to the
defendant being registered as a Society. Therefore, we
decline to accept the contention of the defendant that the
plaintiff falls within the scope of Section 2(10) of the MPT
51
Act, within the definition of “a person having interest” in
the Trust.
40. So far as the observations of the trial Court are
concerned, obviously, it understood the word a person
having interest to mean that the person has to be an
individual. It failed to note that a person may include a
legal person also. Drawing a distinction between a legal
person and an individual, was obviously uncalled for. It
was not canvassed by defendant also. Having been
misdirected on this aspect, it did not address the question
whether the plaintiff had any interest in the administration
of the Trust and thereby it fell within the meaning of ‘a
person interested’ as defined under Section 2(10) of the
MPT Act. Therefore, we hold that the conclusions reached
by the trial Court on this aspect are not sustainable in law.
B. Reg Cause of action Vis-à-vis Trademarks Act:
41. The second aspect that needs consideration is,
the bar for the cause of action contended by the plaintiff.
Learned counsel for the defendant submits that in effect
the suit is claiming the relief in respect of the use of the
52
trademark of IEEE. Therefore, it is the discretion of the
Court under Section 34 of the Specific Reliefs Act, either to
grant or not to grant the relief. In addition, there is a clear
bar under Section 53 of the Trademarks Act and the
plaintiff being the licensor of the IEEE Inc., cannot claim
locus to seek the relief. Therefore, there being a bar in
respect of the substantial relief sought in the plaint, a
clever drafting cannot entitle the plaintiff to maintain the
suit. In this regard, he relied on the following judgments:
42. In the case of Saurav Jain and another Vs.
ABP Design and another22, the Apex Court held that
relief cannot be granted when the plaintiff artfully drafting
the plaint challenged the auction and sought injunction,
even though the suit had arisen out of land ceiling
proceedings. Obviously, in the present suit declaration is
sought in respect of termination of contract and
consequent effect on the services and support emanating
from such contract and for damages. One of the
consequences of termination was the use of the trademark
22
(2022) 18 SCC 633
53
of IEEE. Therefore, the ratio is not applicable to the facts
of the present case.
43. In the case of Amish Agarwal vs. Venus Home
Appliances Pvt. Ltd.,23 it was held that when a suit is
based on the registration of the trademark, the
Trademark Registration Certificate ought to have been
filed at the initial stage and in order to do complete justice,
such certificate was permitted to be produced later. In the
present case, certain additional document is produced and
it need to be considered yet.
44. In the case of Haldiram Bhujiawala and
another Vs. Anand Kumar Deepak Kumar and another
(2000) 3 SCC 250 supra, in para 9 to 11, it was held as
below:
“9. The question whether Section 69(2) [of Indian
Partnership Act] is a bar to a suit filed by an
unregistered firm even if a statutory right is being
enforced or even if only a common law right is being
enforced came up directly for consideration in this
Court in Raptakas Brett Co. Ltd. v. Ganesh
Property [(1998) 7 SCC 184] . In that case, Majmudar,
23
2019 SCC Online,Delhi
54J. speaking for the Bench clearly expressed the view
that Section 69(2) cannot bar the enforcement by way
of a suit by an unregistered firm in respect of a
statutory right or a common law right. On the facts of
that case, it was held that the right to evict a tenant
upon expiry of the lease was not a right “arising from a
contract” but was a common law right or a statutory
right under the Transfer of Property Act. The fact that
the plaint in that case referred to a lease and to its
expiry, made no difference. Hence, the said suit was
held not barred. It appears to us that in that case the
reference to the lease in the plaint was obviously
treated as a historical fact. That case is therefore
directly in point. Following the said judgment, it must
be held in the present case too that a suit is not barred
by Section 69(2) if a statutory right or a common law
right is being enforced.
10. The next question is as to the nature of the right
that is being enforced in this suit. It is well settled that
a passing-off action is a common law action based on
tort (vide Bengal Waterproof Ltd. v. Bombay Waterproof
Mfg. Co. [(1997) 1 SCC 99] ). Therefore, in our opinion,
a suit for perpetual injunction to restrain the defendants
not to pass off the defendants’ goods as those of the
plaintiffs by using the plaintiffs’ trademark and for
damages is an action at common law and is not barred
by Section 69(2). The decision in Virendra
Dresses v. Varinder Garments [AIR 1982 Del 482] and
the decision of the Division Bench of the Delhi High
55Court in Bestochem Formulations v. Dinesh Ayurvedic
Agencies [ RFA (OS) 17 of 1999 dated 12-7-1999 (Del)
(DB)] state that Section 69(2) does not apply to a
passing-off action as the suit is based on tort and not on
contract. In our opinion, the above decisions were
correctly decided. (Special Leave Petition No. 18418 of
1999 against the latter was in fact dismissed by this
Court on 28-1-2000.) The learned Senior Counsel for the
appellants no doubt relied upon Ruby General Insurance
Co. Ltd. v. Pearey Lal Kumar [(1952) 1 SCC 194 : AIR
1952 SC 119 : 1952 SCR 501] . That was an arbitration
case in which the words “arising out of a contract” were
widely interpreted but that decision, in our view, has no
relevance in interpreting the words “arising from a
contract” in Section 69(2) of the Partnership Act.
11. Likewise, if the reliefs of permanent injunction or
damages are being claimed on the basis of a registered
trademark and its infringement, the suit is to be treated
as one based on a statutory right under the Trade Marks
Act and is, in our view, not barred by Section 69(2)“.
45. It is pertinent to note that the damages claimed
in the present suit are arising out of the contract between
the parties, even though the contract hinges on the
trademark. Apart from trademark, the services rendered
are also included. As noted supra, the third prayer, though
is in respect of use of the IEEE brand, mark etc., the
56
question would depend upon the terms and conditions of
the contract and also the unauthorized use of the said
brand.
46. In the case of P.K. Sen Vs. Exxon Mobile
Corporation and another supra, the Delhi High Court held
that, a suit for infringement of a trademark may be
instituted by a registered user as if he were registered
proprietor. The suit cannot be filed by a licensor or
permitted user and he cannot be a co-plaintiff also.
47. In the case of BJCL-BRITE (JV) Vs. National
Highways Authority of India,24 the relief sought was
declaration that the defendant cannot invoke the bank
guarantee. It was held that the plaintiff wishing the court
to interpret contractual term, it does not pertain to the
legal right or status of either party, the relief cannot be
granted in view of Section 34 of the Specific Reliefs Act. In
the case on hand, the reliefs being an out come of the
termination of the contract, the ratio cannot be applied.
Similar views were also taken by Madras and Allahabad
24
2010 SCC Online Delhi 618
57
High Court in 1914 SCC Online Madras 529 and 1959 SCC
Online Allahabad 94.
48. In the case of Gujarat Bottling Co. Ltd. v. Coca
Cola Co., (1995) 5 SCC 545 supra, it was held as below:
“13. Apart from the said provisions relating to
registered users, it is permissible for the registered
proprietor of a trade mark to permit a person to use
his registered trade mark. Such a licensing of trade
mark is governed by common law and is permissible
provided
(i) the licensing does not result in causing confusion
or deception among the public;
(ii) it does not destroy the distinctiveness of the
trade mark, that is to say, the trade mark, before
the public eye, continues to distinguish the goods
connected with the proprietor of the mark from
those connected with others; and
(iii) a connection in the course of trade consistent
with the definition of trade mark continues to exist
between the goods and the proprietor of the mark.
(See: P. Narayanan –Law of Trade Marks and
Passing-Off, 4th Edn. paragraph 20.16, p. 33.)
It would thus appear that use of a registered trade
mark can be permitted to a registered user in
accordance with provisions of the Act and for that
purpose the registered proprietor has to enter into an
agreement with the proposed registered user. The
58
use of the trade mark can also be permitted dehors
the provisions of the Act by grant of licence by the
registered proprietor to the proposed user. Such a
licence is governed by common law.”
49. In the case of Rob Mathys India (P) Ltd. v.
Synthes Ag Chur, 1997 SCC Online Del 516 supra, the Delhi
High Court reiterated the principles laid in Gujarat Bottling
case and held that:
“It is well settled that use of an unregistered trade
mark under a licence granted by the proprietor bona
fide under its control and supervision is use of the
unregistered mark by the proprietor. Under no
principle or precedent can it be held that at common
law use by the licensee of an unregistered mark is
not use by the licensor or that such use will
invalidate a passing off action or disentitle the
licensor to protection of its trade mark.”
50. In the case of K.E. Burgmann A/S. v. H.N. Shah,
2001 SCC OnLine Del 1054 supra, the ratio of Rob Mathys
India Pvt. Limited v. Synthes Ag Chur, 1997 (17) PTC 669,
was reiterated.
59
Analysis and conclusions on Point B:
51. Coming to the present suit, it is to be noticed
that the plaintiff is a registered owner of the Trademark,
but not proprietor of the Trademark. It appears that the
required document is said to have been produced under IA
No.5 before the trial Court. Para 12(b) of the plaint as
reproduced supra, deals with the branding etc., in clear
terms. It is worth to note that, there is a clear mention
that pursuant to a licensing agreement between IEEE Inc
and the plaintiff, the plaintiff has the licence to use the
brand, marks and the name of IEEE. Obviously, defendant
is claiming prior user of the trademark of IEEE Inc. It is not
in dispute that the defendant in its earlier avataar as IEEE
Bombay Chapter had entered into the first agreement on
29.08.2012. If that be so, what were the rights of the
defendant prior to such agreement and what were the
rights subsequent to the agreement and also subsequent
to the registration of Trust need to be established. It being
a question of fact, cannot be decided only on the basis of
the plaint averments.
60
52. The trial Court observes that the plaint aver
about the cause of action and the cause of action is
pertaining to the agreements between the parties. It
observes that when mixed question of law and facts are
involved, it cannot be adjudicated without evidence being
recorded.
53. Para 57 of the plaint narrate the cause of action
for filing the suit as below:
“57. The Plaintiff submits that the cause of action
for filing the present Suit has arisen on account of:
a. the Plaintiff’s acceptance of the Defendant’s
repudiatory breach of the Agreements, by which the
Agreements stood terminated with immediate effect
vide the Plaintiff’s Termination Notice dated 2 May
2024 issued to the Defendant, as a consequence of
which, the Defendant was no longer authorized to
use the ‘IEEE’ name, brand marks and symbols, as
contemplated under Schedule A of the Agreements;
and
b. the Defendant’s failure to adhere to and comply
with the plaintiff’s notice to the Defendant to cease
and desist from using the ‘IEEE’ name, brand,
marks and symbols in any manner or form, in any
communications/documents/websites/domain
names/content/press releases etc., which was
61issued on 2 May 2024. The present Suit has
therefore been filed within the prescribed period of
limitation.”
54. It is to be noted that the reliefs claimed by the
plaintiff depend upon the proof of the defendant’s
repudiatory breach of the contract and its failure to adhere
to the notice of the plaintiff. Therefore, when the reliefs
are not fully based on the common law relating to
trademarks, it would not be proper to lift the veil of the
agreements and invoke the common law to say that
Section 53 of the Trademarks Act, comes in play and the
plaintiff being a licenced or registered owner (which itself
is a question of fact) of the Trademark is barred from
instituting the suit.
55. It cannot be over looked that the agreements
speak of providing governance services and funding to the
defendant. These services are in pursuance to the
agreements, may be bereft of the trademark issue. If that
be so, then only because the issue of trademark is
involved and that relief is barred, the other reliefs cannot
be rejected. It is settled proposition of law that when there
62
are multiple reliefs, and if one of the relief is barred by
law, the plaint cannot be rejected in its entirety. Therefore,
we are of the view that the contention of the defendant
that there is no cause of action and the cause of action
contended by the plaintiff is barred under Section 53 of the
Trademarks Act, cannot be accepted.
56. Having answered points raised by us in favour
of the plaintiff, the appeal filed by the plaintiff deserves to
be allowed. The cross appeal filed by the defendant against
the adverse finding recorded in the order impugned is to
be dismissed. Hence, the following:
ORDER
(1) Commercial Appeal No.181/2025 is allowed.
The impugned order rejecting the plaint is set
aside.
(2) Commercial Appeal Crob.3/2025 is dismissed.
(3) Consequently, the IA No.4 before the
Commercial Court stands dismissed and the
Suit is restored to the file of the Commercial
63
Court and it shall proceed in accordance with
law.
(4) All interim applications, if any stand disposed
off.
(5) Costs made easy.
Sd/-
(V KAMESWAR RAO)
ACTING CHIEF JUSTICE
Sd/-
(C M JOSHI)
JUDGE
tsn*