Introduction
Trademark is defined in Section 2(zb) of Trademark Act, 1999 as- a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. Section 16(1)(b) of the Companies Act, 2013 (hereinafter, CA 2013) provides that the company can be made to rectify its name if in the opinion of the Central Government, it is too identical or resembles the name of another company which is in existence and already registered. The company has to then change its name within a period of three months from the issue of such direction after adopting an ordinary resolution for it.
An aggrieved registered proprietor of a trademark can make an application to the Central Government (power delegated to the regional director. Informing that the name of the company is too identical with or resembles the trademark he has registered and request that the other company be made to change their name. Such an application should be made within 3 years of incorporation of the company or registration or change of the company’s name as per Section 16(1)(b) of CA, 2013.
Procedure to be Followed
Step 1- Call a board meeting
As per sections 16(1)(b) and 173 and Secretarial Standards-1, if the registered owner is a company, then it has to call a board meeting or pass a board resolution by circulation to consider and approve for filing an application against the company which has kept a name to identical or resembling to its trademark.
Further, authorize a Company Secretary (CS) or Chief Financial Officer (CFO) or Director for filing an application to RD (Regional Director).
To authorize practicing CA/CS/CMA/Advocate to appear before RD and execute a Vakalatnama or Memorandum of appearance.
Step 2- Filing of form and documents
As per Section 16(1)(b) file application in Form RD-1 with the Regional Director along with requisite documents and fees.
Step 3- Date of hearing
Regional Director will give a date of hearing upon receiving the application.
Step 4- Order of the Regional Director
If RD is of the opinion that the name is identical or resembles the registered trademark of the company filing the application, then it may direct the company to change its name and the said company shall change its name or new name within a period of 6 months from the issue of such direction.
Step 5- Filing of form and documents
File the certified copy of the order of RD with ROC in Form INC-28 along with necessary documents and fees.
Documents Required
- Filing application to RD- Form RD-1.
- Copy of board resolution
- Filing order with ROC- Form INC-28.
- Certified copy of the RD’s order
Conclusion
The process can take somewhere between 52 days to 133-135 days to complete. An aggrieved registered owner can file a complaint to the central government that the other company’s name is too identical or resembles its name. The said complaint has to be made within 3 years of incorporation of the other company. If the claim holds value, then the other company has to change its name within 6 months of ROC’s order.
