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TMI Blog2017 (8) TMI 1079X X X X Extracts X X X X X X X X Extracts X X X X ..... ction, the petitioner had made a representation to the RD under Section 22 of the Act which was rejected by the RD principally for two reasons: first, that the petitioner was not the owner of the trade mark 'Mondelez', which was owned by M/s Kraft Foods Global Brands, LLC, a subsidiary of M/s Mondelez International, Inc.; and second, that the RD was of the view that jursdiction to issue any directions under Section 22 (1) (i) of the Act had expired on 10.09.2013 and therefore no directions could be issued to respondent no.2 to change its name. 3. Briefly stated, the controversy in the present case arises in the context of the following facts: 3.1 The petitioner was incorporated under the Act on 28.05.2012. The word 'Mondelez' is a distinctive part of the corporate name of the petitioner and is also a part of the trade mark of Mondelez International Inc., which is stated to be one of the world's largest snacks companies, with global net revenues of USD 35 billion in 2012. It is stated that Mondelez International Inc. has a presence in 165 countries around the world and employs around 1,00,000 persons across the globe. 3.2 That in the year 2010, Kraft Foods, Inc. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the RD) in exercise of powers under Section 22(1)(ii)(b) of the Act. 3.6 The Intercontinental Great Brands, LLC (formerly, Kraft Foods Global Brands, LLC) and the petitioner also filed a suit (being CS(OS) 1587/2013) against respondent no.2 and Vijay and Ajay Marketing Private Limited and their directors inter alia for restraining the said defendants from using the mark 'Mondelez' and/or any other similar mark either as trade mark, trade name or corporate name or as part of the trade or corporate name. The said suit was decreed in favour of the plaintiffs therein and against the defendants (including respondent no.2) on 24.07.2014 and respondent no.2 has been, inter alia, restrained from using the name 'Mondelez' including as part of its corporate name. 4. At the outset, it is necessary to note that despite service of notice, respondent no.2 did not enter appearance to contest the present petition. In the circumstances, the allegations made by the petitioner with regard to the conduct and intention of respondent no.2 remain uncontroverted. It is clear from a plain reading of the petition that the adoption of the name of 'Mondelez' as a part of the corporate name of respondent no. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... proscribed the making of an application by a registered proprietor of a trade mark after five years of becoming aware of registration of the company with an undesirable name and, contended that the said proviso clearly implied that a proprietor of a trade mark could apply to the RD for directing change in name of the company even after a period of one year. 9. Before proceeding further, it would be relevant to refer to Sections 20 and 22(1) of the Act, which are set out below:- "20. COMPANIES NOT TO BE REGISTERED WITH UNDESIRABLE NAMES (1) No company shall be registered by a name which, in the opinion of the Central Government, is undesirable. (2) Without prejudice to the generality of the foregoing power, a name which is identical with, or too nearly resembles,- (i) The name by which a company in existence has been previously registered, or (ii) a registered trade mark, or a trade mark which is subject of an application for registration, of any other person under the Trade Marks Act, 1999, may be deemed to be undesirable by the Central Government within the meaning of sub-section (1). (3) The Central Government may, before deeming a name as undesirable under clause ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e only question that remains to be adressed is whether the RD (as a delegatee of the powers of the Central Government) could direct change in name of respondent no.2 after the period of twelve months. Section 22(1)(ii)(b) of the Act obliges a company to change its name, if so directed by the Central Government within a period of twelve months from the date of first registration or the date of registration of the change in name. Since, the RD failed to issue any such directions within a period of twelve months, respondent no.2 would not be obliged to change its name merely on the directions of the RD. However Section 22 of the Act was amended by virtue of the Trade Marks Act, 1999 (with effect from 15.09.2003) and the proviso to Section 22(1) was inserted. In terms of the said proviso, a proprietor of a registered trade mark was disabled from making an application for directing change in name of a company with an undesirable name after expiry of five years of receiving notice of such company. It is thus implicit in the proviso that a registered proprietor of a trade mark could make an application within a period of five years of becoming aware of registration of a company with a sim ..... X X X X Extracts X X X X X X X X Extracts X X X X
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