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Group A (Rathi Industries) Group B (Rathi Bars) P.R. Rathi K.K. Rathi Vinay Rathi Uddhav Rathi Vikas Rathi Anurag Rathi 10.11 Similar to the terms and conditions with respect to the use of the mark RATHI by the members of RF, the members of RRC could market goods bearing the mark RATHI, only if the company/firm is set up by the male blood descendants of the Rathi Family and their legal heirs. 10.12 The terms and conditions to use the mark RATHI were identical for the members of both MoUs and Trusts. There was a mutual and oral understanding between the members that the mark will be used with the common object of benefitting the Rathi Family and safeguarding rights of the Rathi Family from third parties. 10.13 Both the trusts, on several occasions, jointly issued trademark caution notices to make the public aware that the right to use the mark RATHI was only with the trustees and the beneficiaries of the two trusts and use of the same by any third party will be prejudicial to their interests. 10.14 The trustees of RF and RRC have jointly filed suits for infringement against the members of RF amongst other defendants.
10.17 The aforesaid amendment and Trademark Agreements are contrary to the terms of the aforesaid MoUs and the Trust Deeds and violate the mutual and oral understanding of the Rathi Family. 11 Accordingly, the present suit has been filed on behalf of the plaintiff seeking relief of permanent injunction restraining the defendants no.1 to 3 from using the mark RATHI and restraining the defendants no.13 to 18 from issuing licenses to any third party/outsider along with other ancillary reliefs. 12 Case set up the defendants no.13 to 18 in their written statement:

30. Limits on effect of registered trade mark.--

(1)..

(2) A registered trade mark is not infringed where--

(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act."

19 In terms of Section 12 of the Act, the Registrar may permit the registration of the identical or similar marks by more than one proprietor in case of honest concurrent use of the said marks in respect of similar goods. As per Section 28(3) of the Act, when two or more persons are the registered proprietors of the identical trade marks, both of them have the right to use the said trade marks. Further, Section 30(2)(e) of the Act clearly lays down that use of a registered trade mark by one of the registered proprietors shall not amount to infringement of the said trade mark. 20 In view of the aforesaid provisions, both RF as well as RRC and before that K.L. Rathi and G.D. Rathi, being the registered proprietors of the mark RATHI, have the concurrent right to use the said mark and neither of them can prevent the other from using the said mark. 21 It has been vehemently contented on behalf of the plaintiff that K.L. Rathi was the prior registrant of the mark RATHI and the registration was granted in favour of G.D. Rathi only on account of consent given by K.L. Rathi. However, no such consent has been brought to the attention of the Court. In fact, the records of the case show that K.L. Rathi had the intention to oppose the registration sought by G.D. Rathi. Reference in this regard is made to a letter at page no. 243 of the documents filed along with the replication to the written statement on behalf of the defendants no.13 to 18. 22 Once registration had been granted in favour of G.D. Rathi with effect from 1980, the plaintiff could not have restricted the use of the mark RATHI by G.D. Rathi in any manner, as both G.D. Rathi and K.L. Rathi and after the execution of Assignment Deeds, their assignees RF and RRC, had an equal right to use the said mark. Both the entities had an independent right to use the mark RATHI without any obligation towards each other. 23 As noted above, MOU-1 was executed on 24th June, 1995 by 12 members comprising of three different family groups of the Rathi Family. Similarly, MOU-2 was executed on 18th October, 1995 between six members forming part of two different groups of the Rathi Family. In order to give effect to the aforesaid MoUs, the Trust Deeds were executed to form two trusts, i.e, RF and RRC. The signatories to MOU-1 and the Trust Deed- 1 were not the parties to MOU-2 and the Trust Deed-2, and vice-versa. Therefore, the terms of the MOU-1 and the Trust Deed-1 would be binding only on the signatories thereto and not on the signatories to MOU-2 and Trust Deed-2, and vice-versa. Even if the terms of the said MOUs and the Trust Deeds were identical, it would hardly be relevant. In other words, a signatory to the MOU-1 cannot have a grievance against a signatory to MOU-2 for alleged violation of the terms of the MOU-2. 24 Clearly, each of the two MOUs and the Trust Deeds were separate and independent documents that governed the members of the respective trusts. There was 'no mutual and oral understanding' between the members of the Rathi Family that the mark will be used with the common object of benefitting the Rathi Family and safeguarding rights of the Rathi Family in the mark RATHI from third parties, as alleged in the plaint. Only vague and bald averments have been made in the plaint without giving any particulars with regard to when this oral understanding was arrived at and between whom. In fact, only the six lifetime trustees of the MoU-2 are referred to as 'family' in the said MoU. Hence, it is clear that 'Family' would only include the trustees of the MoU-2 and not the entire Rathi Family. Therefore, the plaintiff cannot in any manner, control the usage or licensing of the mark RATHI by RRC, as RRC has an independent right to use or license the mark RATHI in accordance with the provisions of MOU-2 and the Trust Deed-2. 25 In Shri Ram Education Trust v. SRF Foundation & Anr., 2016 SCC OnLine Del 472, a Division Bench of this Court had held that when a family name is adopted by different branches of a family from a common ancestor, one branch of the family cannot appropriate the same to the exclusion of the others. The goodwill and reputation in the trade mark shall enure to the benefit of all the members of the family, unless a particular branch of the family has been specifically excluded. Merely because one branch of the family was the prior adopter of the mark, the same would not extinguish the rights of the other family members. Therefore, in the present case, the earlier registration of the mark RATHI in favour of K.L. Rathi would not make any difference.

26 Senior counsel for the plaintiff has placed reliance on the pleadings in the CS(COMM) 961/2018 titled Anil Rathi v. Jaipur Steel Tech., in which two trustees of the RRC were the plaintiffs, to contend that the family members of the Rathi Family always acted jointly to protect and safeguard their rights in the mark RATHI. I am not persuaded by this submission. The aforesaid suit was filed by Anil Rathi, who is a member of RF, against another member of RF, who was indiscriminately issuing licenses to the third parties permitting the use of the mark RATHI in respect of their products, alleging breach of MoU-1, which was between the trustees of RF. The two trustees of RRC were made plaintiffs in the aforesaid suit only to support the case of Anil Rathi (plaintiff no.1 therein) and to confirm that the licenses to the defendants had not been issued by any member of the RRC. 27 In my considered view, the pleadings in the aforesaid suit cannot be read in a manner to say that members of RRC were bound by the MoU- 1/Trust Deed-1 of RF or that there was a 'mutual and oral understanding' between all the members of Rathi Family to protect the mark RATHI. In fact, the pleadings in the said suit demonstrate that there were separate and independent MOUs/Trust Deeds entered into between different branches of the Rathi Family. A reference may be made to paragraph 26 of the plaint in CS(COMM)961/2018: