2009 (9) TMI 583 - HC - Companies Law

Trademark registration - period of limitation - Held that - In construing the period of limitation extended by the amendment and the rights and interest of the parties, the dispute as to whether the second respondent should be presumed to have known of the existence of the petitioner much earlier to the date of the application, and this circumstance necessarily requiring an adjudication as to a finding of fact of the same is a case in point as to the uncertainties that have to be accommodated in permitting the period of limitation to be enlarged in favour of the second respondent in the The contentions of the respondent that the petitioner had made attempts to seek registration of trade marks with the word Technova in the year 1989 and that the respondent learnt about it in or about the year 2002, and had filed objections to the grant of such trade marks, etc., would also indicate that there is no certainty that the second respondent was unaware of the petitioner s existence and therefore, the application was not belated. In any event, it may be safely said that the second respondent s remedy under section 22 had become barred under the unamended provision. The second respondent then could not, under a different avatar as the proprietor of a registered trade mark, claim an extended period of limitation for purposes of the Companies Act. The remedy, if any, against infringement of a registered trade mark is concerned, being available to the second respondent to be established and adjudicated in independent proceedings, the application, by the second respondent under section 22, was clearly barred and therefore, the impugned order is bad in law and is accordingly quashed.

Summary

Issues Involved:
1. Jurisdiction of the Regional Director under Section 22 of the Companies Act, 1956.
2. Limitation period for filing an application under Section 22.
3. Interpretation of the amended Section 22 of the Companies Act, 1956.
4. The validity of the application filed by the second respondent.
5. The impact of the Trade Marks Act, 1999 on the Companies Act, 1956.

Detailed Analysis of the Judgment:

1. Jurisdiction of the Regional Director under Section 22 of the Companies Act, 1956:
The petitioner contended that the Regional Director lacked jurisdiction to entertain the second respondent's application under Section 22 of the Companies Act, 1956, as the application was barred by limitation. The petitioner argued that under Section 22(1)(ii)(b), the Central Government could order rectification of the name within 12 months of registration. Since the petitioner was registered with the name "Technova" on June 26, 1995, the application filed in 2004 was beyond the permissible period.

2. Limitation period for filing an application under Section 22:
The petitioner emphasized that the proviso to Section 22(1) introduced by the Trade Marks Act, 1999, could not be applied retrospectively to revive a right that had already become time-barred. The second respondent argued that the amendment allowed for a five-year period from the date of the amendment's introduction (December 13, 2000), making their application timely.

3. Interpretation of the amended Section 22 of the Companies Act, 1956:
The court examined both the unamended and amended versions of Section 22. The unamended section allowed for rectification within 12 months of registration. The amended section introduced a new category of applicants (holders of registered trade marks) and extended the limitation period to five years from the date the applicant became aware of the company's registration. The court noted that the language of the section was ambiguous and required interpretation to avoid rendering the provision nugatory.

4. The validity of the application filed by the second respondent:
The second respondent's application, filed on January 6, 2004, was beyond the five-year period from the petitioner's name change in 1995. The court found that the second respondent's right to file an application had lapsed under the unamended section and could not be revived by the amendment. The court held that the second respondent's remedy under Section 22 was barred, and the application was invalid.

5. The impact of the Trade Marks Act, 1999 on the Companies Act, 1956:
The court acknowledged that the Trade Marks Act, 1999, amended Section 22 of the Companies Act, 1956, to include holders of registered trade marks as applicants. However, the court concluded that the amendment could not revive rights that had already become time-barred. The court emphasized that the second respondent's remedy for trade mark infringement should be sought through independent proceedings.

Conclusion:
The court quashed the impugned order of the Regional Director, holding that the application filed by the second respondent was barred by limitation and that the second respondent's remedy under Section 22 had lapsed under the unamended provision. The court emphasized that the amendment could not revive time-barred rights and that the second respondent should seek remedy for trade mark infringement through independent proceedings.