Punjab-Haryana High Court
Mindtree Limited And Anr vs Regional Director Northern Region And ... on 22 December, 2014
Author: K.Kannan
Bench: K. Kannan
IN THE HIGH COURT OF PUNJAB AND HARYANA
AT CHANDIGARH
Civil Writ Petition No.17150 of 2013 (O&M)
Date of decision:22.12.2014
MindTree Limited and another ... Petitioners
versus
The Regional Director, Northern Region, Ministry of Corporate
Affairs, Shastri Bhawan, New Delhi-110001 and also at A-14,
Sector 1, PDIL Bhavan, Noida (UP), and another.
.... Respondents
CORAM: HON'BLE MR. JUSTICE K. KANNAN
----
Present :- Mr.Rohit Khanna, Advocate
for the petitioners.
Mr. Deepak Gupta, Advocate,
for the respondents.
----
1. Whether reporters of local papers may be allowed to see the
judgment ? Yes.
2. To be referred to the reporters or not ?Yes.
3. Whether the judgment should be reported in the digest ?Yes.
----
K.Kannan, J.
1. The writ petition is the instance of the petitioner- Company described as petitioner No.1, along with the second petitioner challenging the order passed by the Ministry of Corporate Affairs, Government of India declining to intercede on behalf of the petitioner which had applied for change of name of the second respondent Company called as "MindTree Eduvation Private Limited" as being an identical with or nearly resembling the SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -2- registered trade mark of the 1st petitioner-Company called the MindTree Limited. The case was dismissed accepting the defence of the second respondent that the second respondent was engaged in the field of education and had its registered trade mark since 2006. The petitioner-Company had registered in 1999 and the trade mark had been registered as class 19, 9 & 16 (computer hardware printed matter etc.) on 24.02.1999. The impugned order held that the second respondent cannot be considered as identical or to nearly resembling with the trade mark of the applicant-Company MindTree because it contained one additional different word, namely, Eduvation.
2. The counsel appearing on behalf of the petitioner would contend that the petitioner-Company is a mid-sized International Information Technology Consulting and Implementation Company. MindTree was started in 1999 and had headquarters at Warren New Jersey and had its offices in Bangalore (India) and three development centres in India and 15 offices in Asia, Europe and the United States. It would seen that the petitioner is ranked No.18 in Indian I.T. Companies and over all at 445 in Fortune India 500 list of 2011.
3. Section 22 contemplates a situation where a Company is registered by inadvertence with a name which in the opinion of the Central Government is identical with or nearly resembling the name of a Company which had been in existence previously. The SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -3- rectification could come either suo motu, on the opinion of the Central Government or on an application by registered proprietor of a trade mark. All that would be necessary for application of Section 22 would be the first mentioned Company, namely, a Company which had registered a trade mark with a particular name could have a cause for an application to have the rectification directed to be done against another Company which is registered inadvertently without reference to the identity or its resemblance.
4. Section 22 cannot itself be read in isolation and Section 20 contemplates another situation which is not necessarily mutually exclusive to Section 22. Section 20 uses another description for a second Company which is registered but having an identical name to an already registered to existing Company which has the same trade mark or carries a name similar or identical. This similarity for a second Company, Section 20 would qualify as a Company registered with the "undesirable name". It would be essential to reproduce Section 20 and Section 22 to understand that there is a certain overlap in so far as the second Company that is registered with a particular name. It could either come under Section 20 or under Section 22 or under both. Both the Sections i.e. 20 and 22 of the Companies Act are reproduced as under:-
"20. Companies not to be registered with undesirable names.- (1) No company shall be registered by a name SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -4- 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 (ii) of sub-section (2), consult the Registrar of Trade Marks."
"22. Rectification of name of company.-(1) If, through inadvertence or otherwise, a company on its first registration or on its registration by a new name, is registered by a name which,-
(i) in the opinion of the Central Government, is identical with, or too nearly resembles, the name by which a company in existence has been SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -5- 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) .......
Provided that .......
(2) ............"
5. Section 20 which we have extracted would be attracted if the name of a Company is identical or nearly resembled a registered trade mark of any other person under the Trade Marks Act of 1999. Admittedly, the petitioner-Company had an earlier trade mark registered as "MindTree" and the Company called as "MindTree Technology".
SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -6-
6. If MindTree is a fairly well grown Company which has its roots in India and branches in India and Asia and it has also registered the trade mark MindTree, it requires no forensic skill to infer that the name of a Company that has the same prefix viz. MindTree Eduvation is identical. The difference lies in the fact that one is MindTree Technology and another is MindTree Eduvation. Neither Section 20 nor Section 22 requires a complete congruity of names. It only requires a name which is identical or nearly resembling the first registered Company.
7. The overlapping of the provisions of Sections 20 and 22 has been considered by the Dehli High Court in Montari Overseas Limited Versus Montari Industries-1996(7) SCL 102. The judgment states that both the Sections will have to be read together and I find myself in full agreement with the view expressed in the said judgment of the Dehli High Court.
8. The impugned order is erroneous in trying to make a difference by the only fact that in the name of the respondent- Company MindTree is suffixed with Eduvation in the place of technologies. It is not merely the identity of the name of a Company that is relevant. Even if the name of the respondent-Company carries the trade mark of the first registered Company, it would give rise to a situation of a Company with an undesirable name. The decision of the authority below is erroneous and it is set aside. SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document Civil Writ Petition No.17150 of 2013 (O&M) -7-
9. The second respondent is directed to rectify the name of the Company dropping the name "MindTree" and the Registrar will secure due compliance in the manner contemplated by law.
10. The writ petition is allowed with costs against the second respondent determined at `25,000/-.
(K.KANNAN) JUDGE 22.12.2014 sanjeev/rimpal SANJEEV KUMAR 2014.12.23 14:14 I attest to the accuracy and integrity of this document