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2019 Supreme(Kar) 742
IN THE HIGH COURT OF KARNATAKA
L. Narayana Swamy, J.
M/s Step-In Forum Represented Herein by Its Director & Authorised Signatory Suresh Mittal – Appellant
Versus
M/s Step-In Forum Represented by Its Chairman – Respondent
Regular First Appeal No. 938 of 2012
Decided On : 16-07-2019
Nidhishree B.V., Adv., Guruprasanna, Adv., Surabhi Srinivas, Adv., M. Erappa Reddy, Adv.
Headnote:
Constitution Of India,1950 - Commissioner of Income-tax - Claim is exactly same mark - Claim any advantage over the later registered - Appellant is a Company incorporated under provisions of Companies - Prior to its incorporation Appellant was an association of persons carrying out activities for promoting software related test experiences by bringing together software test professionals practitioners experts academicians and service/product vendors to share techniques methodologies frameworks experiences and case studies to perform manage and automate software testing- Its Organizing Committee comprised some of leading names in Software and Information Technology sector –Held, Case of unregistered trade marks a passing-off action is maintainable passing-off action depends upon principle that nobody has a right to represent his goods as goods of somebody- In other words a man is not to sell his goods or services pretence that they are those of another person case mark over which both appellant and respondents want to lay a claim is exactly same mark- It is case of appellant that it prior user and continued to use same even after getting registration into a company said has been admitted by respondent in his cross-examination trial court has erred in declining to grant relief in favour of plaintiff only on ground that only on and from registration one can lay a claim over a mark said view and view that mark used by an unregistered organization would not very unregistered organization after its registration unless there is a resolution or deed transferring such a reputation and goodwill of unorganized group are contrary to law on point in above two decisions referred to I am of view that judgment and decree passed by trial court suffer from irregularity and illegality as pointed above and liable to be set aside and consequently suit of appellant is entitled to be decreed - Appeal allowed
JUDGMENT :
L Narayana Swamy, J.
This appeal is filed by the plaintiff in O S No.8773/2006 on the file of XVIII Additional City Civil Judge (CCH No.10), Bengaluru City being aggrieved of the judgment and decree dated 19.01.2012 dismissing the suit. The suit was for the relief of permanent injunction.
2. The brief facts of the case are as follows:
The Appellant is a Company incorporated under the provisions of the Companies Act, 1956. Prior to its incorporation the Appellant was an association of persons, carrying out activities for promoting software - related test experiences by bringing together software test professionals, practitioners, experts, academicians, and service/product vendors to share techniques, methodologies, frameworks, experiences, and case studies to perform, manage and automate software testing. Its Organising Committee comprised some of the leading names in the Software and Information Technology sector.
3. Earlier, the Appellant organisation had the Respondent No.2, Mr. Arunkumar Khannur, as one of its founding members. He was also the Managing Director of a Company known as Quality Solutions for Information Technology Pvt. Ltd. for short, 'QSIT'.
4. However, in October 2005, the Respondent No.2 resigned from QSIT and immediately thereafter on 23.11.2005, he resigned from the Appellant's organisation.
5. Subsequent thereto, the Respondent No.2 incorporated a company with the name and business deceptively similar/identical to the QSIT and faced appropriate legal proceedings under the Companies Act and before other forums such as the Civil Court in respect thereof. The suit bearing OS No. 9531/2005 filed against the Respondent No.2 by QSIT was decreed by the City Civil Court, restraining him from carrying on business deceptively similar/identical to that of QSIT.
6. Despite his resignation and being fully aware of the existence of the Appellant, the Respondent No.2 along with other persons, applied for registration of the Respondent No.1 as a society within the meaning of the Karnataka Societies Registration Act, 1960. The Respondent No.1 herein, by misleading the concerned authorities, came to be registered on 27.12.2005 as a society. Soon thereafter, the Respondent No.1 started issuing mischievous mails/notices/communications to various members, associates and well-wishers of the Appellant for alleged programmes being organized by it. The Respondents also mischievously registered a website www.stepinforum.in on 12.01.2006 despite the fact that the Appellant had a pre- existing website under the name www.stepinforum.org as far back as 19.02.2005.
7. Aggrieved by the actions of the Respondents, and in order to protect its trade name and trade mark 'STeP - IN Forum', the Appellant herein filed OS No.8773/2006 against the Respondents inter alia seeking to restrain them from using the Appellant's mark 'STeP -IN Forum' in any manner whatsoever.
8. The respondents filed written statement, inter alia contending that the appellant obtained registration on 3.5.2006, whereas the first respondent organization has been duly registered under the Karnataka Societies Registration Act, 1960 with effect from 27.12.2005. The respondents are prior users of the name and the appellant has no locus standi to seek permanent injunction. The prior incorporation of appellant company on non profitable basis since October, 2003 was denied. The organization by name STEP-IN-FORUM was conceived by 2nd respondent along with Srinivasan Desikan during October, 2003. Pursuant to resignation of members of organizing committee on 24.11.2005, the organization when was not registered, the mark STEP-IN-FORUM does not belong to any one. The allegation that the defendants are passing off services as that of the appellant's trade mark was denied.
9. Based on the pleadings of the parties, the trial court framed the relevant issues consisting of prior user of the mark, plaintiff proving passing off by the 2nd defendant or defendants proving plaintiff's passi
