The court clarified that the provisions of consent under the MPT Act do not apply to cases where a legal entity seeks to enforce its contractual rights, allowing the suit to proceed despite prior user claims of the trademark.

JUDGMENT :

C.M. JOSHI, J.

1. 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:

(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.

(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.

(F) Under the above said agreements of the year 2012 and 2013, the parties had agreed that the plaintiff should provide professional and administrative serv