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TMI Blog2012 (6) TMI 672X X X X Extracts X X X X X X X X Extracts X X X X ..... ature in its wisdom has confined power of Central Government to registered names and marks only and did not extend inquiry into identical with and resemblance with unregistered names and marks – Respondent no. 2 is unregistered company - power of rectification in section 22 is limited to form an opinion as to identical with and resemblance with registered names and marks only - It thus cannot be said that any case for exercising of powers for rectification under Section 22 was made out. I am unable to find any identity or resemblance between "ITE" or "ITE India" and "International Trade and Exhibitions". The alphabets "IT" and "ITE" are today identified more as "Information Technology" and "Information Technology Enabled" than with "International Trade and Exhibitions". It thus cannot be said that any case for exercising of powers for rectification under Section 22 was made out. Petition succeeds and is allowed - W.P. (C) NO. 2102 OF 2011 - - - Dated:- 20-9-2011 - RAJIV SAHAI ENDLAW, J. Rajiv Nayyar, Rajeev Virmani, Vikas Mehta and Avinash Wadhwani for the Petitioner. Ms. Neeru Sharma for the Respondent. JUDGMENT 1. The petition impugns the order d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the names of the petitioner and the respondent no. 2 and that the parent company of the petitioner had been using the name "International Trade and Exhibitions", internationally. 7. The respondent no. 2 rejoined pleading that the respondent no. 2 being the prior user in India of the words "International Trade and Exhibitions" and having earned goodwill and reputation in the market of its services, was entitled to the direction to the petitioner to change its name. 8. The Regional Director in the order impugned in this petition, held: ( i ) It to be an admitted fact that the respondent no. 2 was the prior user of the marks "ITE" and "ITE India" and which were abbreviation of "International Trade and Exhibitions" and the registered owner of the said trademark since 2006 and 2007 in clause 16 and 35; ( ii ) The respondent no. 2 was using the words "International Trade and Exhibitions" below its abbreviated name since 1994; ( iii ) That the respondent no. 2 had acquired tremendous amount of goodwill and reputation in the market for its services and had established a brand image in the business of Events, Conventions, Conferences, Exhibition Organization and Management; ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nearly resembles, the name by which a company in existence has been previously registered, whether under this Act or any previous companies law, the first-mentioned company, or ( ii ) on an application by a registered proprietor of a trade mark, is in the opinion of the Central Government identical with, or too nearly resembles, a registered trade mark of such proprietor under the Trade Marks Act, 1999, such company, " ( a ) may, by ordinary resolution and with the previous approval of the Central Government signified in writing, change its name or new name; and ( b ) shall, if the Central Government so directs within twelve months of its first registration or registration by its new name, as the case may be, or within twelve months of the commencement of this Act, whichever is later, by ordinary resolution and with the previous approval of the Central Government signified in writing change its name or new name within a period of three months from the date of the direction or such longer period as the Central Government may think fit to allow: 1. Provided that no application under clause ( ii ) made by a registered proprietor of a trade mark after five years of coming t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... respective of whether the same was registered or not, again nothing prevented the Legislature from stating so. However the Legislature having confined the test to be applied under Section 22 to that of identical with and too near resemblance with the registered name and the registered trademark, the scope thereof cannot be expanded to include unregistered names and unregistered marks. In this regard it may be noticed that Section 22 of the Companies Act was amended with effect from 15th September, 2003 in accordance with Section 158 of the Trademarks Act, 1999. Section 34 of the Trademarks Act, 1999 protects/save the rights in an unregistered trademark and action in law for violation whereof is known as an action for passing off. Thus while the Legislature in enacting the Trademarks Act, 1999 was conscious of rights in unregistered trademarks also, it did not while amending Section 22 vest any power in the Central Government to direct rectification for the reason of identical with or too resemblance with an unregistered name or mark. 15. I am even otherwise of the opinion that the power as has been vested in the Central Government under Section 22 of the Act is generally the po ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hould be taken that they are not exploited. Such words should not be allowed even though they have not been registered as trademarks. a. Where the existing companies are stated and found to be well known in their respective fields by their abbreviated names, these companies may be allowed to change their names, by way of abbreviation with the prior approval of the Regional Director concerned." and with reference to the Department Circular dated 16th February, 1995 inter alia provides: "Even in the case of unregistered companies or firms who have built up a reputation over a considerable period, the principle (that if a name is identical with or too closely resembles the name by which a company has been previously registered and is in existence, it should not be allowed) should be observed as far as practicable. In view of the difficulty in checking up whether a proposed name is identical with or too nearly resembles the name of an unregistered company or a firm of repute, it should at least be ensured that a proposed name is not allowed if it is identical with or too nearly resembles the name of a firm within the knowledge of the Registrar. The cases of foreign companies ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Legislature has not deemed it appropriate to provide for rectification of undesirable names other than those covered by Section 20(2). The remedy against undesirable names falling in any category other than Section 20(2) is not under Section 22 but would be before the Civil Court 19. The distinction between the nature of power under Section 22 and before a Civil Court was noticed as far back as in K.G. Khosla Compressors Ltd. v. Khosla Extraktions Ltd. AIR 1986 Delhi 181. It was held that the jurisdiction of the Central Government under Sections 20 and 22 of the Companies Act and the jurisdiction of the Civil Court operate in two different fields and the Central Government has to act within the guidelines laid down under Section 22 of the Act, while there are no such limitation on the exercise of jurisdiction by the Civil Court. Similarly, the Division Bench of this Court in Montari Overseas Ltd. v Montari Industries Ltd. [1996] 7 SCL 102 also held that the remedy under Section 22 of the Companies Act does not supersede the common law remedy available to an aggrieved party; while the remedy for identity with a registered name/mark is under Section 22, that for restrai ..... X X X X Extracts X X X X X X X X Extracts X X X X
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