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2024 Supreme(Mad) 2008
IN THE HIGH COURT OF JUDICATURE AT MADRAS
ANITA SUMANTH, J.
M/s.Shaktiman Equipments Private Limited – Appellant
Versus
Union of India – Respondent
WP.No.12314 of 2021 and W.M.P.Nos. 13099 & 21916 of 2021 & 14515 of 2022
Decided on : 14-10-2024
Important Points
Subject
Corporate Law - Trademark Law
Act Referred
COMPANIES INCORPORATION RULES : R.8(a)(1)(d)
CONSTITUTION OF INDIA : Art.226
TRADE MARKS ACT : S.29
Headnote
(B) Trademark Rights - Prior use and registration - The court emphasized that a right to a name/mark vests in a prior user, and similarity in name constitutes a bar against adoption by a subsequent user. (Paras 22, 27)
Facts of the case:
The petitioner, incorporated in 2012, was directed to change its name ‘Shaktiman Equipments Private Limited’ due to a petition by R3, which has been using the trademark ‘Shaktiman’ since 1961 and holds multiple registrations. (Paras 1, 10)
Findings of Court:
The court upheld the order of R2, confirming that R3 had established prior use and that the petitioner’s use of the name was contrary to Section 16(1)(d) of the Companies Act. (Paras 10, 30)
Issues: The main issues were the prior use of the trademark by R3 and the legality of the petitioner’s name change order. (Paras 10, 22)
Ratio Decidendi: The court ruled that the prior user of a trademark holds exclusive rights, and the petitioner’s claim to use the name ‘Shaktiman’ was rejected based on established trademark rights. (Paras 22, 30)
Result: Writ petition dismissed.
Advocate Appeared:
For the Appellant : Mrs.N.Kavitha Rameshwar
For the Respondents: Mr.T.L.Thirumalaisamy, Central Government Standing Counsel, Mr.Navod Prasannan For M/s.Giria Laws
ORDER :
PRAYER: Writ Petition filed under Article 226 of the Constitution of India praying to issue a Writ of Certiorari, to call for the entire records of the order of the 2nd respondent in his order CA.No.11/Sec.16/RD (SR)/2020- 21 dated 09.04.2021 and to quash the same as being illegal and unsustainable in law.
The petitioner had challenged an order dated 09.04.2021 of R2 being the Regional Director, Ministry of Corporate Affairs, directing it to change its name within three months from that date.
2. One M/s.Tirth Agro Technology Private Limited (R3) had approached R2 with a petition under Section 16 of the Companies Act, 2013 (Act) for rectification of the name of the petitioner. The petition has come to be accepted on the ground that the trademark of the petitioner (Shaktiman) is identical to the trademark of R3 and hence seeking a direction to the petitioner to change its name.
3. Before R2, the arguments of R3, as reiterated before me, were that R3 was incorporated as a private limited company on 26.07.2000. It is engaged in the manufacture of machinery, plant, equipment, tools and implements for the agricultural industry. It is the registered owner of the trademark ‘Shaktiman’ for various classes of products under the Trademarks Act, 1999 (‘in short, ‘TM Act’). In all, it holds the trademark ‘Shaktiman’ both as a word mark as well as a label mark for various classes of goods as follows:-
| Trademark No. | Trademark Name | Class | Status |
| 209541 | Shakthiman | 7 | Registered |
| 990334 | Shakthiman | 7 | Registered |
| 1419724 | Shakthiman | 7 | Registered |
| 2277146 | Shaktiman Label | 1 | Registered |
| 2277149 | Shaktiman Label | 2 | Registered |
| 2277150 | Shaktiman Label | 3 | Registered |
| 2277151 | Shaktiman Label | 4 | Registered |
| 2277152 | Shaktiman Label | 5 | Registered |
| 2277153 | Shaktiman Label | 6 | Registered |
| 2277155 | Shaktiman Label | 8 | Registered |
| 2277156 | Shaktiman Label | 9 | Registered |
| 2277157 | Shaktiman Label | 10 | Registered |
| 2277158 | Shaktiman Label | 11 | Registered |
| 2277160 | Shaktiman Label | 13 | Registered |
| 2277162 | Shaktiman Label | 15 | Registered |
| 2277163 | Shaktiman Label | 16 | Registered |
| 2277164 | Shaktiman Label | 17 | Registered |
| 2277165 | Shaktiman Label | 18 | Registered |
| 2277166 | Shaktiman Label | 19 | Registered |
| 2277167 | Shaktiman Label | 20 | Registered |
| 2277169 | Shaktiman Label | 22 | Registered |
| 2277170 | Shaktiman Label | 23 | Registered |
| 2277171 | Shaktiman Label | 24 | Registered |
| 2277172 | Shaktiman Label | 25 | Registered |
| 2277173 | Shaktiman Label | 26 | Registered |
| 2277174 | Shaktiman Label | 27 | Registered |
| 2277175 | Shaktiman Label | 28 | Registered |
| 2277176 | Shaktiman Label | 29 | Registered |
| 2277177 | Shaktiman Label | 30 | Registered |
| 2277179 | Shaktiman Label | 32 | Registered |
| 2277180 | Shaktiman Label | 33 | Registered |
| 2277181 | Shaktiman Label | 34 | Registered |
| 2277182 | Shaktiman Label | 35 | Registered |
| 2277183 | Shaktiman Label | 36 | Registered |
| 2277184 | Shaktiman Label | 37 | Registered |
| 3276155 | Shakthiman Supreme | 7 | Registered |
| 3857624 | Shakthiman Bale Master 150 | 7 | Registered |
| 3857627 | Shaktiman Paddy Master 3776 | 7 | Registered |
| 4007957 | Shaktiman Cotton Master 8037 | 7 | Registered |
4. In addition, R3 has also been using the mark ‘Shaktiman’ abroad, having registered it as a word mark and trademark in several countries, including USA, Vietnam, Philippines, South Africa, Israel and China. It has been using the marks from 1961 and has established a reputation with such use, garnering significant goodwill.
5. Moreover, having used the mark over six decades, the trademark ‘Shaktiman’ has acquired a secondary meaning in the agricultural industry associated with R3. The turnover of R3 from the year 2011–12 to 2019–20 had expanded from a sum of Rs.447.75 crores to Rs.777.53 crores and its turnover till October 2020 is a sum of Rs.829
