Global Ieee Institute for Engineers Vs Ieee Mumbai Section Welfare Association

GLOBAL IEEE INSTITUTE FOR ENGINEERS, A PRIVATE LIMITED COMPANY UNDER THE COMPANIES ACT, 1956, HAVING ITS REGISTERED OFFICE AT: 26/1, 5^TH FLOOR, WTC BRIGADE GATEWAY CAMPUS, DR. RAJKUMAR ROAD, MALLESWARAM WEST, BENGALURU, KARNATAKA, INDIA, 560 055, (REP. BY ITS AUTHORIZED SIGNATORY, MR. SRIKANTH CHANDRASEKARAN)

¶12

...APPELLANT

¶13

(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)

¶14

AND:

¶15

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.

¶16

2

¶17

AND HAVING ADDRESS AT C/O. DON BOSCO INSTITUTE OF TECHNOLOGY, KURLA, MUMBAI, MAHARASHTRA, INDIA, 400070.

¶18

…RESPONDENT (BY MR. PRADEEP NAYAK, ADVOCATE ALONG WITH MR. ADITYA CHATTERJEE, MR. Y. SANKEERTH VITTAL AND MR. AJAY SURESH, ADVOCATES )

¶19

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.

¶20

IN COMAP CR NO. 3 OF 2025

¶21

BETWEEN:

¶22

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:

¶23

104-G, ACEVIN, MARWAH COMPLEX, SAKI VIHAR ROAD, ANDHERI (EAST), MUMBAI, MAHARASHTRA, INDIA 400 072.

¶24

CORRESPONDING ADDRESS NOW AT: B-4/2, NICE, MIDC, SATPUR, NASHIK-422 007, MAHARASHTRA, INDIA (REPRESENTED BY ITS AUTHORIZED SIGNATORY MR. ANAND S GHARPURE).

¶25

...APPELLANT (BY MR. PRADEEP NAYAK, ADVOCATE ALONG WITH MR. ADITYA CHATTERJEE, MR Y. SANKEERTH VITTAL & MR. AJAY SURESH, ADVOCATES)

¶26

3

¶27

AND:

¶28

GLOBAL IEEE INSTITUTE FOR ENGINEERS, A PRIVATE LIMITED COMPANY UNDER THE COMPANIES ACT, 1956, HAVING ITS OFFICE AT 26/1, 5^TH FLOOR, WTC BRIGADE GATEWAY CAMPUS, DR. RAJKUMAR ROAD, MALLESWARAM WEST, BANGALORE, KARNATAKA, INDIA 560 055. (REP. BY ITS AUTHORIZED SIGNATORY MR. SRIKANTH CHANDRASEKARAN)

¶29

…RESPONDENT

¶30

(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)

¶31

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.

¶32

THE COMAP AND COMAP CR HAVING BEEN HEARD AND RESERVED FOR JUDGMENT ON 19.06.2025 AND COMING ON FOR ‘PRONOUNCEMENT OF JUDGMENT’, THIS C M JOSHI J., PRONOUNCED THE FOLLOWING:

¶33

CORAM: HON'BLE MR V KAMESWAR RAO, ACTING CHIEF JUSTICE AND HON'BLE MR JUSTICE C M JOSHI

¶34

4

¶35

CAV JUDGMENT

¶36

(PER: HON'BLE MR JUSTICE C.M. JOSHI)

¶37

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 .

¶38

The factual aspects of the case as may be found in the plaint are summarized as below:

¶39

5

¶40

(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.

¶41

(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.

¶42

6

¶43

(C) On 13.07.1976, the defendant was established

¶44

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.

¶45

(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.

¶46

(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.

¶47

7

¶48

(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:

¶49

"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;

¶50

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

¶51

8

¶52

through the Plaintiff permitted the Defendant to use the brand, marks, and name of IEEE, for the purposes of furtherance of the Agreements; and

¶53

c. 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."

¶54

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.

¶55

(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

¶56

9

¶57

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.

¶58

(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

¶59

10

¶60

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.

¶61

(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.

¶62

(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

¶63

11

¶64

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.

¶65

(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.

¶66

(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:

¶67

"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:

¶68

12

¶69

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);

¶70

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;

¶71

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,

¶72

13

¶73

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;

¶74

d. award costs of the present Suit to the Plaintiff; and

¶75

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."

¶76

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.

¶77

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

¶78

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

¶79

14

¶80

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.

¶81

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.

¶82

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.

¶83

15

¶84

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.

¶85

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

¶86

16

¶87

reference to the ascertainment of a fact and therefore, the second contention is also not permissible.

¶88

After hearing the arguments, the trial Court by

¶89

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.

¶90

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

¶91

17

¶92

VII Rule 11(a) of CPC, has approached this court by filing Cross appeal.

¶93

It is to be noted that the appellant, in this

¶94

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.

¶95

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.

¶96

18

¶97

Pradeep Nayak along with Aditya Chatterjee and Y. Sankeerth Vittal and Mr. Ajay Suresh, for respondent.

¶98

The Submissions:

¶99

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:

¶100

(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

¶101

1 (2004) 3 SCC 137

¶102

19

¶103

and another² and Shri Nijanand Jogani Abhiyan Trust Vs. Parshottam Narsinhbhai Patel and others³ .

¶104

(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.

¶105

(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

¶106

2 2013 SCC Online Gujarat 8716

¶107

3 2024 SCC Online Gujarat 3043

¶108

20

¶109

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.

¶110

(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

¶111

21

¶112

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 .

¶113

(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 .

¶114

4 (2005) 6 SCC 641

¶115

5 Appeal from Order No. 546/2014 and other connected matters DD 28.07.2015

¶116

6 2019 SCC Online Gujarat 5751

¶117

7 1986 Mh. LJ 773.

¶118

8 (2002) 6 Bombay CR 253

¶119

22

¶120

(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.

¶121

(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

¶122

23

¶123

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 Cooperative 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.

¶124

(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

¶125

entering into agreements, any prior right of the

¶126

9 2010(2) Mh.L.J 612;

¶127

10 2005 SCC Online Bombay 292

¶128

11 2017 SCC Online Bombay 9563

¶129

24

¶130

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 .

¶131

(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.

¶132

Per contra, learned counsel appearing for the defendant made his submissions as under:

¶133

(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

¶134

12 (1995) 5 SCC 545

¶135

13 1997 SCC Online Delhi 516

¶136

14 2001 SCC Online Delhi 1054

¶137

25

¶138

that the plaint averments show that the plaintiff is admittedly, a wholly owned stepdown subsidiary of IEEE

¶139

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.

¶140

(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.

¶141

(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.

¶142

26

¶143

(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.

¶144

(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.

¶145

(f) He submits that a meaningful reading of the plaint shows that the suit is relating to infringement of

¶146

15 (1985) 4 SCC 393

¶147

27

¶148

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.

¶149

(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 SubClause (iv) and (p) of Section 50 of the MPT Act. In this regard, he relies on the judgment in the case of Church

¶150

of North India Vs. Lavajibhai Ratanjibhai and others¹⁶ .

¶151

(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

¶152

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

¶153

16 (2005) 10 SCC 760.

¶154

28

¶155

pertaining to the administration of the Trust, nothing else will.

¶156

(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.

¶157

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 .

¶158

(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

¶159

17 2017 SCC Online Delhi 6393

¶160

18 2015 (2) ABR 496

¶161

29

¶162

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.

¶163

(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.

¶164

(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

¶165

19 (2000) 3 SCC 250

¶166

30

¶167

Shrinarayan Agarwal vs. Mangeram Radheshyam

¶168

Hardoi²⁰ .

¶169

(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.

¶170

(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.

¶171

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

¶172

20 1978 SCC Online MP 99

¶173

31

¶174

maintainable in view of section 53 of the Trademarks

¶175

Act,1999.

¶176

A. Reg: Section 50 and 51 of MPT Act:

¶177

The first aspect to be considered by us is, the

¶178

bar contained in Sections 50 and 51 of the MPT Act. The law on this aspect is fairly settled. To appreciate this

¶179

aspect, it is necessary to understand who a “person having interest” in a Trust is.

¶180

Section 2 (10) of the MPT Act, after its

¶181

amendment, reads as below:

¶182

2 (10) “person having interest” includes —

¶183

(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,

¶184

(b) in the case of a math, a disciple of the math or a person of the religious persuasion to which the math belongs,

¶185

(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,

¶186

32

¶187

(d) in the case of a society registered under the Societies Registration Act, 1860, any member of such society, and

¶188

(e) in the case of any other public trust, any trustee or beneficiary,”

¶189

(emphasis by us)

¶190

It is pertinent to note that in order to come

¶191

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.

¶192

With this background, it is necessary to look into

¶193

the provisions of Sections 50 and 51 of MPT Act, which read as below:

¶194

"50. Suit by or against or relating to public trusts or trustees or others.––

¶195

In any case,—

¶196

(i) xxxxx

¶197

(ii) xxxxx,

¶198

(iii) xxxxx

¶199

33

¶200

(iv) for any declaration or injunction in favour of or against a public trust or trustee or trustees or beneficiary thereof,

¶201

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 subclauses (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 :—

¶202

(a) xxxxx; xxxxx

¶203

(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

¶204

(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:

¶205

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:

¶206

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:

¶207

Provided also that, the provisions of this section and other consequential provisions shall apply to all public trusts, whether registered or not

¶208

34

¶209

or exempted from the provisions of this Act under sub-section (4) of section 1.

¶210

51. Consent of Charity Commissioner for institution of suit.––

¶211

(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)

In the case of Sopan Sukhdeo Sable v.

¶217

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:

¶218

35

¶219

"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.

¶220

xxx xxx.

¶221

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.”

¶222

21 . In the case of The Trust of Shri Laxmi Narayan Dev Temple v. Ajendrapasadji Narendraprasadji

¶223

Pande ,(2013 SCC OnLine Guj 8716) it was held that there is

¶224

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

¶225

Nijanand Jogani Abhiyan Trust v. Parshottam Narsinhbhai Patel, 2024 SCC OnLine Guj 3043.

¶226

22. In the case of M aharashtra Shetkari Seva Mandal

¶227

v. Bhaurao Bayaji Garud, 2010 SCC OnLine Bom 166 it was

¶228

held that declaration and injunction sought by the plaintiff

¶229

36

¶230

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.

¶231

In the case of Vinayaka Dev, Idagunji v.

¶232

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:

¶233

21 Bombay Public Trusts Act, which is in pari materia with MPT Act was applicable for North Karnataka at relevant period.

¶234

37

¶235

“ 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 nonsuited 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

¶236

38

¶237

Bombay Public Trusts Act is not attracted at all in the facts of the present case.

¶238

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."

¶239

24. In the case of Sanjay S Patel vs Baroda Cricket

¶240

Association- Appeal from Order No.546/2014, supra , it was observed by Allahabad High Court as below:

¶241

39

¶242

“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

¶243

40

¶244

to 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”.

¶245

25. In the case of Ladhiben, vs Trustees of Machhu

¶246

Kathiya Chaturvedi Modh Brahaman Gyanti Bhuj, Thru.

¶247

Trustees - 2019 SCC Online Gujarath 5751 , supra, it was held as below:

¶248

“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.”

¶249

26. In the case of Mahomed Hassan Samru v.

¶250

Peer Hazarath Diwanshah Dargah Trust -2002

¶251

41

¶252

SCC OnLine Bom 274, it was held that the twin condition

¶253

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.

¶254

In the case of Navyug Co-op. Housing Society Ltd.

¶255

v. Vile Parle Kelavani Mandal, 2005 SCC OnLine Bombay 292

¶256

supra, it was observed as below.

¶257

“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.

¶258

xxxx

¶259

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.”

¶260

42

¶261

In the case of Ramadevi Haribux Garodia v.

¶262

International Society for Krishna Consciousness ,-2017

¶263

SCC OnLine Bom 9563, supra, it was held that :

¶264

“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.”

¶265

In the case of Vidarbha Kshatriya Mali Shikshan Sanstha v. Mahatma Fuley Shikshan Samiti, 1986 SCC

¶266

OnLine Bombay 107 supra, it was held that :

¶267

"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

¶268

43

¶269

persons 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.

¶270

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.

¶271

44

¶272

In the case of Shree Gollaleshwar Dev and others vs. Gangawwa Kom Shantayya Math and

¶273

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:

¶274

“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

¶275

45

¶276

the 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.”

¶277

Analysis and conclusions on Point A:

¶278

In view of the above law laid down what

¶279

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

¶280

46

¶281

in 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.

¶282

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

¶283

47

¶284

agreement, 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.

¶285

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.

¶286

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

¶287

48

¶288

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.

¶289

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.

¶290

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

¶291

49

¶292

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.

¶293

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.

¶294

50

¶295

As observed above, to bring an action

¶296

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.

¶297

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

¶298

51

¶299

Act, within the definition of “a person having interest” in the Trust.

¶300

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.

¶301

B. Reg Cause of action Vis-à-vis Trademarks Act:

¶302

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

¶303

52

¶304

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

¶305

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:

¶306

In the case of Saurav Jain and another Vs.

¶307

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

¶308

22 (2022) 18 SCC 633

¶309

53

¶310

of IEEE. Therefore, the ratio is not applicable to the facts of the present case.

¶311

In the case of Amish Agarwal vs. Venus Home

¶312

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.

¶313

In the case of Haldiram Bhujiawala and

¶314

another Vs. Anand Kumar Deepak Kumar and another

¶315

(2000) 3 SCC 250 supra, in para 9 to 11, it was held as below:

¶316

"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,

¶317

23 2019 SCC Online,Delhi

¶318

54

¶319

J. 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.

¶320

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

¶321

55

¶322

Court 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.

¶323

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)".

¶324

It is pertinent to note that the damages claimed

¶325

in the present suit are arising out of the contract between

¶326

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

¶327

56

¶328

question would depend upon the terms and conditions of the contract and also the unauthorized use of the said brand.

¶329

In the case of P.K. Sen Vs. Exxon Mobile

¶330

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.

¶331

In the case of BJCL-BRITE (JV) Vs. National

¶332

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

¶333

legal right or status of either party, the relief cannot be granted in view of Section 34 of the Specific Reliefs Act. In

¶334

the case on hand, the reliefs being an out come of the

¶335

termination of the contract, the ratio cannot be applied.

¶336

Similar views were also taken by Madras and Allahabad 24 2010 SCC Online Delhi 618

¶337

57

¶338

High Court in 1914 SCC Online Madras 529 and 1959 SCC

¶339

Online Allahabad 94 .

¶340

48. In the case of Gujarat Bottling Co. Ltd. v. Coca

¶341

Cola Co. , (1995) 5 SCC 545 supra, it was held as below:

¶342

“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

¶343

(i) the licensing does not result in causing confusion or deception among the public;

¶344

(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

¶345

(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.)

¶346

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

¶347

58

¶348

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.”

¶349

In the case of Rob Mathys India (P) Ltd. v.

¶350

Synthes Ag Chur , 1997 SCC Online Del 516 supra, the Delhi High Court reiterated the principles laid in Gujarat Bottling case and held that:

¶351

“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.”

¶352

50. In the case of K.E. Burgmann A/S. v. H.N. Shah,

¶353

2001 SCC OnLine Del 1054 supra, the ratio of R ob Mathys India Pvt. Limited v. Synthes Ag Chur, 1997 (17) PTC 669, was reiterated.

¶354

59

¶355

Analysis and conclusions on Point B:

¶356

Coming to the present suit, it is to be noticed

¶357

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.

¶358

60

¶359

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.

¶360

Para 57 of the plaint narrate the cause of action for filing the suit as below:

¶361

"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

¶362

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

¶363

61

¶364

issued on 2 May 2024. The present Suit has therefore been filed within the prescribed period of limitation."

¶365

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.

¶366

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

¶367

62

¶368

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.

¶369

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:

¶370

ORDER

¶371