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TMI Blog2010 (4) TMI 786X X X X Extracts X X X X X X X X Extracts X X X X ..... the rejoinder to both the affidavits-in-reply on 13-2-2006. Since the petition is ripe for final hearing, the same is taken up for hearing and the learned advocates appearing on behalf of all the parties were heard at great length on the dispute between the parties. 3. The brief facts giving rise to the present petition are that the petitioner-company is incorporated under the Companies Act, 1956 and commenced its business of manufacturing and selling glass mosaic tiles, glass tiles, marble tiles and building materials. The petitioner has a technical collaboration with Bisazza SPA, Italy by virtue of which the petitioner was allowed to use the name Bisazza for the goods to be manufacturing by the petitioner. The said Bisazza SPA, Italy is one of the world leaders in these goods. The petitioner applied for registration of trade mark "Bisazza" in February, 1996 before the Registrar of Trade Marks and the said application is still pending. 4. The petitioner in April, 2000 came to know that respondent No. 1 company was registered under the Companies Act, 1956 by name Pino Bisazza Glass (P.) Ltd., vide registration certificate dated 8-3-2000. Respondent No. 1 company was set up with ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nies would be considered to be too nearly resembling the name of existing companies. This table reads as under : Proposed name Existing company too nearly resembling name 1. Hindustan Motor and General Finance Co. Hindustan Motor Ltd. 2. The National Steel Mfg. Co. (P.) Ltd. National Steel Works 3. Trade Corporation of India Ltd. State Trading Corporation of India Ltd. 4. Viswakarma Engineering Works (P.) Ltd. Viswakarma Engineer (India) (P.) Ltd. 5. General Industrial Financing and Trading Co. Ltd. General Financial and Trading Corporation 6. India Land and Finance Ltd. Northern India Land and Finance Ltd. 7. United News of India Ltd. United Newspapers Ltd. 8. Hindustan Chemicals and Fertilizer Ltd. Hindustan Fertilizers Ltd. 8. Based on the above guidelines and circulars, Mr. Soparkar has submitted that the petitioner-company's name is Bisazza India Ltd., and the name of respondent No. 1 company is Pino Bisazza Glass (P.) Ltd. The word 'Bisazza' is common in both the parties and hence, the name of respondent No. 1 should be considered to be too nearly resembling the name of the petitioner-company. 9. Mr. Soparkar has further submitted that resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2 and the products with the said mark were marketed in the year 1998-99. Since the said mark was registered, any resemblance to the said mark shall amount to infringement of the right given by registration and may attract an action of passing off. Once the trade mark is registered, legal protection is available to the proprietor of such registered trade mark and the user of the mark is not the conditional requirement of such protection. Mr. Soparkar has, therefore, submitted that criteria laid down under the Trade and Merchandise Marks Act, 1958, for an infringement of trade mark and passing off action under the Trade and Merchandise Marks Act as well as an action for cancellation of a registration having resemblance of a name with the name of an existing company are same and hence the order passed by respondent No. 2 deserves to be quashed and set aside. 12. Mr. Ashok L. Shah, learned advocate appearing on behalf of respondent No. 1 company, on the other hand, has submitted that the word 'Bisazza' has not become synonymous for glass mosaic tiles, ceramic tiles, glass tiles, etc., as claimed by the petitioner. The word "Bisazza" is a very common surname in Italy just as "Shah" or ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e a joint venture between Indian investors and Italian investors. The main Italian investor is Mr. Pino Bisazza. For the said purpose, Mr. Pino Bisazza formed a company by the name M/s. Trend Group STA. The said Italian company holds 67 per cent of the issued and paid-up capital of the respondent-company and is thus controlled by Mr. Pino Bisazza. For the investment to the extent of 67 per cent to be made by Mr. Pino Bisazza through his Italian company was initially required to be approved by the Central Government. However, with the liberalised policy of foreign investment published vide Notification Policy of 215/2000-RB, dated 22-3-2000, no such permission or approval was required from the Central Government. The respondent-company also approached the Reserve Bank of India for granting its approval to the appointment of Mr. Pino Bisazza as a director on the board of directors of the respondent-company. Respondent No. 1 was advised by the Reserve Bank of India that no such permission or approval is required for the appointment of Mr. Pino Bisazza as a director on the board of directors of respondent No. 1 company, particularly when he is not going to get any remuneration from res ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oreover, the name of the respondent-company contains several distinguishing features, namely, it contains the name Pino which is the name of the chief promoter of the respondent-company and has his own surname Bisazza and is known world over as Pino Bisazza. Moreover, the respondent-company's name also includes the word 'Glass' which is missing in the petitioner's name. The petitioner's name contains the word 'India' which is absent in the name of the respondent-company. Thus, except the word 'Bisazza', there is no other common word between the two names. The illustrations given by the Department of Company Affairs and quoted by the petitioner, on the contrary, support the case of the respondent-company inasmuch as all the illustrations contain two or more common words in the compared names. There is not a single illustration which contains just one common word. All the illustrations given by the Department of Company Affairs contain two or more common words for making the name of the subsequently registered company's name to be too nearly resembling the name of the existing company. He has, therefore, submitted that the names of the petitioner and the respondent-company are defini ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... section 22 of the Companies Act, 1956, can be exercised by the Central Government within twelve months, i.e., on or before 8-3-2001. The impugned order is passed by respondent No. 2 on 18-12-2002, which is beyond the statutory period and hence, even on this ground, the name of the respondent No. 1 company is not liable to be changed. 19. In support of the above submissions, Mr. Shah has relied upon the observations made in Buckley's Companies Act. While considering the provisions contained in section 18 of the Companies Act, 1948, it is observed by learned author that the Board must give its direction within six months from the registration of the offending name. The Board can compel a change of name only if the offending name is too like the name of an existing company and not upon any other ground upon which it could have refused registration in the first instance. Even the learned author Ramaiya in his Guide to the Companies Act has observed that the power must be exercised within twelve months of registration of a new company or changed name of an existing company. After twelve months the Central Government cannot exercise the powers and ordinary procedure for alteration of na ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... can issue a direction to the subsequently registered company within 12 months of its first registration or registration by a new name. Once that period lapses the Government loses its authority to issue such a direction. The intention of the Legislature is to restrict or control the powers of the Central Government and not to provide limitation for filing an application. It is an embargo on exercise of the powers and not remedy as such. The powers under section 22 are discretionary powers, which, as already noticed, can be exercised suo motu or on an application filed by an aggrieved person. Section 22 does not in any way interfere or bar the remedies available under different Acts including initiation of any action or passing off action under the Trade and Merchandise Act. The powers are to be exercised in accordance with the principles of natural justice and as per the procedure stated under the Act. It is further held that the period of 12 months is, therefore, essence of invocation of powers in terms of section 22 vested in the appropriate Government. As far as section 22(1)(ii) is concerned, the said provisions are not attracted in the facts of the present case. 21. Based on ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ances, the court was of the view that the objection as to maintainability and question of limitation cannot be accepted against the petitioner. He has, therefore, submitted that both on merits as well as on the issue of limitation, the petition deserves to be allowed. 23. Mr. S.C. Patel, learned standing counsel appearing on behalf of respondent No. 2 has virtually adopted the submissions of Mr. Shah so far as the merits of the matter is concerned and he has also relied on the affidavit-in-reply filed by the Regional Director. He has further submitted that the petition deserves to be dismissed. 24. Having heard learned advocates for the parties and having considered the rival submissions in light of the statutory provisions contained in sections 20 and 22 of the Companies Act, 1956, as well as in light of the case law on the subject, the court is of the view that the order passed by the Regional Director (Western Region), Mumbai rejecting the petitioner's application seeking direction under section 22 of the Companies Act, 1956, for change of name of respondent No. 1 company does not call for any interference, while exercising the writ jurisdiction of this court under article 226 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Bisazza is having 67 per cent interest in respondent No. 1 company. He is having his own reputation and after his name, respondent No. 1 company is known as M/s. Pino Bisazza Glass (P.) Ltd. If the court considers the resembling features in these two names, except the word 'Bisazza' there are no other resembling features. The word 'India' is not there in the name of respondent No. 1 company. The word 'Pino' is also not there in the name of the petitioner-company. The word 'Glass' is not in the name of the petitioner-company. Thus, there are distinguished features in the names of the petitioner-company and respondent No. 1 company and it cannot be said that the name of respondent No. 1 company appears to be too nearly resembling with the name of the petitioner-company. Even the guidelines issued by the Company Law Board in the form of circular referred to hereinabove and instances quoted therein are also of no assistance to the petitioner as admittedly in those instances two words are common in the proposed name as well as in the existing company having too nearly resembling name. No two words are common in the name of the petitioner-company as well as in the name of respondent No. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nal Director. While considering this issue, the Regional Director has observed that it is true that the period of one year has expired from the date of incorporation of the respondent-company. Even on the date of order dated 1-4-2002, passed by the High Court directing the Regional Director to pass final order after giving reasons, the period of one year had expired. The respondent-company has not taken the point of limitation at the time of order passed by this court. This court has not fixed any time-limit on the Regional Director to pass order under section 22 of the Companies Act, 1956. Moreover, the Regional Director had issued directions under section 22 of the Companies Act, 1956, on 26-9-2000, to change the name of the respondent-company within one year period of limitation. At the instance of the respondent-company, this court directed the Regional Director to pass final order after hearing the parties and after giving reasons. The Regional Director has to act in terms of the High Court order dated 1-4-2002 and as such the Regional Director has power to pass order under section 22 of the Companies Act, 1956, even after the expiry of the period of one year. Thus, objection ..... X X X X Extracts X X X X X X X X Extracts X X X X
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