Gujarat High Court
Sahajanand Technologies Private ... vs Regional Director - North on 19 September, 2013
Author: Anant S. Dave
Bench: Anant S. Dave
SAHAJANAND TECHNOLOGIES PRIVATE LIMITED....Petitioner(s)V/SREGIONAL DIRECTOR - NORTH WESTERN REGION - MINISTRY OF C/SCA/3994/2013 ORDER IN THE HIGH COURT OF GUJARAT AT AHMEDABAD SPECIAL CIVIL APPLICATION NO. 3994 of 2013 ================================================================ SAHAJANAND TECHNOLOGIES PRIVATE LIMITED....Petitioner(s) Versus REGIONAL DIRECTOR - NORTH WESTERN REGION - MINISTRY OF & 2....Respondent(s) ================================================================ Appearance: MR DHAVAL SHAH, ADVOCATE for the Petitioner(s) No. 1 MR PS CHAMPANERI, ADVOCATE for the Respondent(s) No. 1 MR SN SHELAT, SENIOR COUNSEL with MR PRANIT NANAVATI AND MR RAHUL PATEL, ADVOCATES for M/S. NANAVATI ASSOCIATES for the Respondent(s) No. 2 NOTICE SERVED for the Respondent(s) No. 3 ================================================================ CORAM: HONOURABLE MR.JUSTICE ANANT S. DAVE Date : 19/09/2013 ORAL ORDER
Heard learned Counsels for the respective parties.
This petition is filed with the following prayers :-
(A) Your Lordships be pleased to issue a writ of mandamus or certiorari or a writ in the nature of certiorari or any other appropriate writ, order or direction setting aside the Order dated 25/10/2012 issued by Respondent No.1 (Annexure A).
(B) Pending admission, hearing and final disposal of this petition your Lordships be pleased to stay and suspend operation and implementation of the order of the Respondent No.2 dated 25/10/2012 at (Annexure A) hereto.
(C) Ex-parte ad interim relief in terms of prayer B above be Granted;
(D) Your Lordships be pleased to issue writ of mandamus or certiorari or a writ in the nature of certiorari or any other appropriate writ, order or direction to Respondent No. 1 to make a direction u/s.
22(1)(ii)(b) to change the name of Respondent No. 2 company by a new name without the use of the words SAHAJANAND within a period of one week from the date of such direction or such longer period as your Lordships be pleased to allow.
(E) Such other and further relief as may be deemed just and proper in the facts and circumstances of the present case may kindly be granted.
Following are the facts in brief which give rise to this petition :-
a) The petitioner is a Company registered under the Companies Act, 1956 and is in the business of manufacture and sale of diamond cutting and diamond processing machines, medical equipments, stents etc. The petitioner was original incorporated by the name of Sahajanand Laser SOS Private Limited on 15.03.1993, which was subsequently changed to Sahajanand Laser Technology Private Limited upon issuance of a fresh Certificate of Incorporation by the Registrar of Companies, Gujarat, Ahmedabad. The petitioner later on changed its name to Sahajanand Technologies Private Limited on 29.08.2002 and has registered various Trade Marks.
b) The respondent No.2 is a company registered under Part IX of the Companies Act, 1956 on 23.04.2002 by the name of Shreeji Laser Technology Private Limited. A partnership firm by name Sahajanand Laser Technology tried to convert the firm into a private limited company by the name of Sahajanand Laser Technology (India) Private Limited in October 2001. However the petitioner objected to the use of the words Sahajanand Laser . Thereafter, the Registrar of Companies cancelled the name of Sahajanand Laser Technology (India) Private Limited, which was earlier made available to the firm under Section 20 and hence, the firm was registered in 2002 as Part IX Company with the name Shreeji Laser Technology Private Limited.
(c) On 29.12.2001, the partnership firm Sahajanand Laser Technology filed a Civil Suit No.5780/2001 with the City Civil Court, Ahmedabad and prayed for ad-interim injunction against the petitioner for infringement of trademark, the said case is still pending. It is alleged that on 28.02.2006 that the respondent Company changed its name to Sahajanand Laser Technology Private Limited, without the knowledge of the petitioner and in collusion with the Registrar of Companies, Ahmedabad.
(d) On 19.09.2006, the respondent Company filed an application under Section 47/57/125 under the Trade Marks Act, 1999 before the Intellectual Property Appellate Board for removal of one of the trade marks of the petitioner. Thereafter, on 20.11.2007, the petitioner submitted an application under Section 22 of the Companies Act, 1956 for rectification of the respondent Company before the Regional Director, Mumbai as the changed name of the respondent Company was identical with and too nearly resembled the name of the petitioner Company. However, the application under Section 22 of the Companies Act, 1956 was kept pending by the Regional Director, Mumbai as the similar issue is sub-judice at City Civil Court, Ahmedabad.
(e) Consequent upon, the petitioner filed a rectification application under the Trademarks Act before the Intellectual Property Appellate Board (IPAB) for rectification of one trademark with the name Sahajanand , which was dismissed.
(f) Subsequently, the petitioner filed a Special Civil Application No.7230/2011 challenging the dismissal of rectification Application No.141/2008 passed by IPAB and the same is pending. The IPAB also dismissed the rectification application no.114/2006 filed by the respondent Company.
(g) On 11.02.2012, the petitioner filed for re-hearing of the pending application under Section 22 of the Companies Act, 1956 for removal of the word Sahajanand from the name of the company Sahajanand Laser Technology Ltd. with the Regional Director, Ahmedabad. The respondent Company has filed a Special Civil Application No.4948/2012 against the order of IPAB dated 28.12.2011, which is still pending.
(h) On 25.10.2012, the order impugned in this petition was passed by the respondent No.1 the Regional Director, Ahmedabad refusing to give direction to the Respondent Company under Section 22 of the Companies Act. Hence, this petition.
Section 20 of the Companies Act pertaining to Companies not to be registered with undesirable names as stated in the year 2001, the then Department of Company Affairs issued various instructions for deciding case of making names available for registration as enumerated in the guide to the Companies Act; and it is submitted that respondent No.2 fraudulently and without the knowledge of the petitioner Company changed its name from Sahajanand Laser Technology (P) Ltd. to Shahjanand Technology (Private) Limited. A fresh Certificate dated 28.02.2006 was then issued by the Registrar of Companies, Gujarat, Ahmedabad and thereafter, again another Certificate of Incorporation on 13.03.2006 by converting Shahjanand Laser Technology (Private) Limited into a public limited company by name Shahjanand Laser Technology Limited was issued. In the above context, Section 22 of the Companies Act, 1956 about Rectification of name of Company by which powers is vested with the Regional Director as per delegation of powers issued by the Ministry of Corporate Affairs and the above change of name of respondent No.2 from Shreeji Laser Technology (P) Limited to Shahjanand Laser Technology Limited in the year 2006 is a name identical and resembles the name of the petitioner Company, which was denied to the respondent No.2 in the year 2001.
That in view of the order dated 28.12.2011 on the Rectification Application filed by respondent No.2 in respect of Trade Mark No.902852 by the Intellectual Property Appellate Board (IPAB) and that the orders passed by IPAB are final and binding on the parties as per Section 21 read with Section 125 of the Trade Marks, 1999, Civil Suits which are maintainable before the Civil Courts for infringement / passing off etc. of Trade Marks but when title to trade mark and date of prior user is disputed, the IPAB is the exclusive authority to adjudicate such disputes and therefore, the Rectification Application filed before the IPAB by respondent No.2 was dismissed leading to filing another Form No.24A by the petitioner before respondent No.1 on 11.02.2012. After submission of reply by respondent No.2 to the Rectification application before the Regional Director, the order dated 25.10.2012 came to be passed by respondent No.1 basically on the ground that the subject matter is sub-judice and it was kept open for the parties to keep relevant documents therein in forms available in accordance with law.
In the above backdrop of facts, learned Counsel appearing for the petitioner contends that refusal by the Regional Director to decide the rectification application of the petitioner on merits on the ground that the matter is sub-judice inasmuch as the Trade Marks Act, 1999 does not contain any provision for Appeal against the order of IPAB. Special Civil Application No.4948/2012 filed by the the respondent No.2 invoking the jurisdiction of the High Court of Gujarat cannot be considered as pendency of proceedings against the order of IPAB. It is submitted that as held in the case of Poddar Tyres Ltd. vs. Bedrock Sales Corporation and Another reported in AIR 1993 BOMBAY 237, pendency of rectification application does not prevent registered proprietors of trade mark from exercising tatutory rights under Act or from seeking interim relief based thereto and therefore, the impugned order deserves to be quashed and set aside.
Against the above, learned Senior Counsel for the respondent Mr. S.N. Shelat contends that the case of the petitioner is pending before this Court and when the matter is sub-judice, the petition deserves to be rejected. Learned Senior Counsel has relied on Paragraphs 14 and 15 of the Affidavit-in-reply filed by the Managing Director of the respondent No.2 herein which reads as under :-
14.
With reference to para 11, I say that the Order dated 28/12/2011 is being challenged by Respondent No.2 by way of Writ Petition no.SCA 4948/12 which is still pending with this Hon'ble Court. I say that present Petitioner Company also filed a rectification application bearing no.ORA/141/08/TM/AHD against the registration by the present Respondent no. 2 before Hon'ble Intellectual Property Appellate Board which also came to be rejected by Hon'ble IPAB on 27.01.2011. I also say that the Petitioner company has also challenged the said Order dated 27.01.2011 by filing a writ Petition which is pending before this Hon'ble Court.
15. With reference to para 12, I say that present Respondent no.2 already filed a writ petition before this Hon'ble Court bearing no. SCA 4948/2012 against the Order dated 28.12.2011 of IPAB and that is still pending. I deny that change in the name was identical with/or to nearly resembled by which a company was existing as alleged or otherwise.
Upon hearing learned Counsels appearing for the respective parties and on perusing the records of the case, it is not in dispute that a Writ Petition being Special Civil Application No.4948/2012 is pending before this Court and that the Rectification Application bearing No.ORA/141/08/TM/AHD filed by the petitioner Company against the registeration of respondent No.2 before IPAB also came to be rejected by IPAB on 21.07.2011 which was challenged before this Court. In the above circumstances, this petition is nothing but another round of litigation undertaken by the petitioner Company and order dated 25.10.2012 passed by the respondent No.1, i.e. the Regional Director, Ministry of Corporate Affairs, North-Western Region, Ahmedabad about the subject matter being sub-judice cannot be said to be in any manner contrary to law warranting any interference by this Court under Article 226 of the Constitution of India.
At the same time, no facts and circumstances have changed from the year 2007 to 2013 and even the Civil Suit No.5780/2001 filed by the respondent No.2 against the petitioner in City Civil Court, Ahmedabad is also pending and therefore, the decision in the case of Poddar Tyres Ltd. (supra) is not applicable to the facts and circumstances of the present case and accordingly, the matter deserves to be rejected. Notice discharged.
Sd/-
(ANANT S. DAVE, J.) CAROLINE Page 10 of 10