The main legal point established in the judgment is the application of the provisions of Order 1 Rule 10 CPC and the principles enunciated in several judgments to determine the necessity of impleading a party as a necessary party for effective and complete adjudication of the disputes and the issues arising in the present suit.

JUDGMENT :

Jyoti Singh, J.

I.A. No. 9048/2022 (under Order 1 Rule 10 CPC, by Plaintiff)

1. Present application has been preferred on behalf of the Plaintiff to implead Members/Trustees of Rathi Research Centre (hereinafter referred to as the ‘Centre’) as party Defendants to the present suit. Ordinarily, this Court would have sought reply to the application on behalf of the Defendants, however, the application is being decided without calling for a reply, in view of the common ground between the parties that the ‘Centre’ is a necessary party in the present suit.

2. A short expose of facts required for the purpose of deciding the present application is that in and around the year 1942, three male members of Rathi Family namely, Mr. G.D. Rathi, Mr. K.L. Rathi and Mr. H.K. Rathi started a company called Rathi Steel Rolling Mills (‘RSRM’) under the trademark RATHI, which was adopted as a trading name. In the year 1968, RSRM entered into a technical collaboration with M/s. TOR Istag Steel Corporation for manufacturing of TOR Steel Bars under the registered trademark RATHI. In 1969, RSRM split into two different groups and two companies were set up, namely, M/s. G.D. Rathi Steels Limited and M/s. K.L. Rathi Steels Limited.

3. On 22.10.1975, K.L. Rathi Steels Limited applied for and obtained registration for the trademark RATHI bearing registration No. 309435 in class 06 for certain items, while G.D. Rathi Steels Limited applied on 16.10.1980 for registration of the same mark in class 06. On 01.12.1982, the application was amended by limiting the registration to certain States and thereafter, the registration was granted for the mark RATHI bearing registration No. 367635 in class 06.

4. Rathi Foundation (hereinafter referred to as the ‘Foundation’) was formed pursuant to a Memorandum of Understanding dated 24.06.1995 (hereinafter referred to as ‘MoU-1’) executed by three different groups of the Rathi Family, named therein. The Trust named Rathi Foundation was created and registered under the Indian Trusts Act, 1882 and the trademark RATHI along with the goodwill was assigned to the ‘Foundation’. To bring on record the ‘Foundation’ as the subsequent proprietor of the trademark RATHI, an appropriate form under TM-24 was filed before the Trade Marks Registry on 15.07.1995 and the same was accepted vide order dated 07.03.1996.

5. MoU-1 incorporated inter-alia provisions specifying the number of licenses to be granted to each family group as well as regulating/restricting the use and/or assignment of the licenses, with respect to the trademark RATHI.

6. On 26.06.1995, another Memorandum of Understanding (hereinafter referred to as ‘MoU-2’) was entered into between few other members of the Rathi Family. In furtherance of MoU-2, a Trust was created by the name of Rathi Research Centre which was duly registered under the Indian Trusts Act, 1882 vide Trust Deed dated 18.10.1995. In the said Trust, there are six lifetime Trustees, divided into two groups. The trademark RATHI was assigned to the said Trust along with the goodwill. The terms of the MoU-2 and the second Trust Deed created in furtherance thereto, were more or less, identical to MoU-1 and the Trust Deed of the ‘Foundation’.

7. Present suit was filed by one of the lifetime Trustees of the ‘Foundation’, upon learning through market surveys that the Defendants were using the mark RATHI PRAGATI alleging infringement, passing off etc. The primal ground raised in the suit is that by virtue of the restrictive covenants in the MoUs, only the Members/Trustees of the ‘Foundation’ and the ‘Centre’ were licensed to use the trademark RATHI and in the manner provided in the respective MoUs and thus the Defendants, not being a part of the Rathi Family or Members/Trustees of the Trusts, were using the mark unauthorizedly. An injunction was sought against the Defendants from using the impugned mark, alleging infringement and passing off.

8. Vide order dated 28.04.2022, an ex parte ad interim injunction was gr