Pendency of trademark infringement suit has no bearing on company name rectification u/s 22

Case Details: Raymond Pharmaceuticals (P.) Ltd. v. Union of India - [2022] 145 taxmann.com 634 (HC-Madras)

Judiciary and Counsel Details

• • N Sathish Kumar, J.
  • N. Viswanathan for the Petitioner.
  • T.K. Bhaskar for the Respondent.

Facts of the Case

In the present case, a question was placed before the High Court whether any pendency of the suit for infringement of trade mark is relevant for the action of rectification of the company’s name u/s 22 of the Companies Act, 1956?

Section 22 of the Companies Act, 1956 deals with the ‘rectification of the name of the company’ which are identical with or too nearly resembles the registered trademark of any proprietor under the Trademarks Act, 1999.

Sec 22(1) read as follows

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,—

(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 may change its name

Whereas section 29 of the Trademark Act, 1999 deals with the ‘Infringement of registered trade marks’. Sec 29(1) read as follows –

“A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.”

High Court Held

The High Court observed that section 29 of the Trademarks Act, 1999 deals with infringement relating to goods and services, whereas Section 22 of the Companies Act, 1956 deals with the rectification of the name of the company which are identical with or too nearly resembles the registered trademark of any proprietor under the Trademarks Act, 1999. Thus, the two Acts act in very different fields.

The High Court further observed that what is required to be seen in the Companies Act is whether the trademark is identical with or too nearly resembles a registered trademark. Therefore, the mere assumption of an identical name or name resembles a registered trademark is sufficient to take action u/s 22 of the Companies Act and it is in no way dealt with goods or services.

The High Court held that the mere resemblance of the company’s name to the registered trademark is sufficient for action for rectification of the name u/s 22 of the Companies Act, 1956.

Further, the High Court held that the pendency/outcome of a suit for infringement of trade mark relating to goods or services is irrelevant for action of rectification of the name of the company u/s 22 of the Companies Act, 1956.