Back
2013 Supreme(Bom) 777
High Court of Judicature at Bombay
S.J. VAZIFDAR & MRIDULA BHATKAR, JJ.
VOV Cosmetics Private Limited & Others
Versus
Union of India, through Government Pleader & Others
Writ Petition No. 2519 of 2012
Decided On : 05-04-2013
For the Petitioners:Sanjay Jain, B.N. Poojari i/b M/s Asian Patent Law, Advocates.
For the Respondents:R1 to R3. A.J. Rana, Senior Counsel with D.P. Singh, Advocate. & R4 to R6, Shyam Mehta, Senior Counsel with Ms. Shilpaja V. Kondalkar, Advocate.
Headnote:Code of Communidade, 1961 - Sections 20 and 22 - Rectification of name of company.
Merely because name of a company subsequently registered is identical with name of company which has already been registered, an order of rectification of name of company, cannot be passed. - Section 20 does not provide that a name by which a company desires to be registered is not undesirable merely because it is identical with or too nearly resembles the name by which a company in existence has been previously registered. Whether such name is undesirable or not would depend on the facts and circumstances of the case. This is clear from sub-section (2) of Section 20 which provides that such a name "may be deemed to be undesirable" by the Central Government within the meaning of sub-section (1). It is merely a presumption which is clear from the use of the word "may" in sub-section (2). If it were otherwise, instead of the word "may", the Legislature would have used the word "shall". Indeed if it were otherwise, the language of the section would have been entirely different. It would have provided for a bar to the registration of a company by a name which is identical with or too nearly resembles the name by which a company has been previously registered.
Similarly, under Section 22, even assuming that the subsequent company is through inadvertence or otherwise, registered by a name which is identical with or to nearly resembles a name by which a company in existence has been previously registered, it does not follow as a matter of course that it should be directed by the Central Government to change it’s name. This is clear from the use of the words "if the Central Government so d irects" in Section 22(1)(b). The word "if’ indicates that it does not follow as a rule that merely, because a company is, through inadvertence or other registered by a name which is identical with or to nearly resembles the name by which a company in existence has been previously registered, it is bound to be ordered to change it’s name. The Central Government must satisfy itself that the name by which the subsequent company registered through inadvertence or otherwise is undesirable. Section 22 complements Section 20 for it takes care of a situation where despite the provisions of Section 20, a company is, through inadvertence or otherwise, registered by a name that is undesirable by providing for the rectification of the name of such company.
There appears to be good reason for conferring such discretion upon the Central Government even where a subsequently registered company is registered by an identical name or a name that closely resembles the name of a previously registered company through inadvertence or otherwise. If, for instance, the subsequent registration is merely through inadvertence, there is no reason why it’s name should be changed despite the fact that the Central Government comes to the conclusion that the name is not undesirable.
There may also be cases where the facts that transpire after such inadvertent registration warrant the continuation of the registration by the said name.
Take for instance a case where after the inadvertent registration, the company obtains a registration of the trademark under the Trademarks Act or where such a company obtains an injunction restraining the previously registered company from using the mark as part of it’s corporate name. It would be an empty formality for the Central Government to first require the change in the name and thereafter entertain a fresh application under Section 20.
In an application for rectification of a name under Section 22, it is necessary for the Regional Director to consider various aspects. It is neither possible nor desirable to exhaustively enumerate them. Suffice it to state that merely because the name of a company subsequently registered is Identical with or too nearly resembles the name of a company which has already been registered, albeit, through inadvertence or otherwise, it does not follow that an order for rectification is bound to be passed.
S.J. Vazifdar, J.
1. Rule. With the consent of the parties, Rule is made returnable forthwith and the Writ Petition is heard finally.
2. The petitioners have challenged an order dated 27th July, 2012, passed by the respondent No. 2 - The Regional Director – under section 22 of the Companies Act, 1956, directing the petitioner No.1 to change its name within three months by deleting the words "VOV COSMETIC" from its name.
3. Petitioner Nos. 3 and 4 are the directors/promoters of petitioner No.1. Petitioner No.2 - Pioneer Products is presently a partnership firm of which petitioner Nos.3 and 5 are the partners. Petitioner Nos. 3 to 5 are Dinesh Bastimal Jain, Smt. Sharmila Dinesh Jain and Bastimal K. Jain, respectively. The petitioner No. 3 is the son of petitioner No. 5. Respondent No. 3 is The Registrar of Companies. Respondent No. 4 is VOV Cosmetic Private Limited on whose application theSRPimpugned order was passed. Respondent Nos. 5 and 6, Dharamshi Manji Patel and Ramji Bhikhabhai Ahir, are the directors of respondent No. 4.
4. From the year 1986, petitioner No. 5 carried on business of manufacturing and marketing cosmetics in the firm name and style of Pioneer Products as the sole proprietor thereof. The products were sold under the mark “VOV”. By and under a deed of partnership dated 20h February, 2012, petitioner Nos.3 and 5 carried on business in the firm name and style of petitioner No.2 – Pioneer Products. Petitioner No.2 continued the business of manufacturing and marketing cosmetic products hitherto carried on by petitioner No.5.
The petitioner stated that with the consent of petitioner No.5, petitioner Nos.2 and 3 "borrowed essential and distinctive characteristic VOV in the name of the company". We presume that by this, it is meant that petitioner No.5 permitted petitioner Nos. 2 and 3 to use the said mark. The petitioners state that with a view to expand their business they proposed the incorporation of petitioner No.1 under the Companies Act, 1956 (hereinafter referred to as “the said Act”). Respondent No.3 issued a certificate of incorporation dated 15th September, 2011, certifying that petitioner No.1 was, on that day, incorporated under the said Act.
For the purpose of this petition, it is not necessary to refer to the various applications made by the petitioners for the registration of the said mark. Nor is it necessary to refer to the applications made by the petitioners to other authorities such as the Food and Drug Administration, Maharashtra.
5. As far as the respondent No. 4 – VOV Cosmetic Private Limited is concerned, it is sufficient to note that it was incorporated by that name on 5th May, 2011 i.e. prior to the incorporation of petitioner No.1 under the said Act.
6. On 23rd April, 2012, respondent No. 4 filed an application under section 22 of the said Act to rectify the first petitioner's name, so as not to resemble its name and not to use the word VOV Cosmetic in the rectified name. The respondent No.4 stated that respondent No.5 – Dharamshi Manji Patel who was one of its promoters, had applied for the trademark “VOV” in the year 2005. Subsequently, respondent No.4 applied for other marks, a prominent feature whereof was the mark “VOV”. The same are pending registration.
7. The names of petitioner No.1 and respondent No.4 are not merely deceptively similar, but are virtually identical.
8. Upon receipt of the fourth respondent's application, petitioner No.1 was issued a notice dated 14th May, 2012, calling upon it to show cause why it ought not be directed under section 22 of the Act to change its name. The Registrar of Companies was also directed to furnish a report in the matter. Petitioner No.1 by its letter dated 24th May, 2012, replied to the show cause notice and on 24th July, 2012, filed a formal reply to the application. The petitioners admitted that their applications for registration of their trademarks, which included as a dominant part thereof, the word “VOV”, were p
