1. The present writ petition under Article 226 and 227 of the Constitution of India has been filed by M/s Refex Industries Limited i.e., the Petitioner herein, thereby seeking quashing and setting aside of the order dated 23.08.2018 passed by Respondent No. 1, whereby the application filed under Section 16(1)(b) of the Companies Act, 2013 for issuing directions to Respondent No. 2 to rectify its similar name, has been dismissed.

          1.1. The Petitioner is further seeking a direction to Respondent No. 2 to change its name.

Factual Matrix

2. The facts, as stated in the petition, which are relevant for adjudication of the present case are as under: -

          2.1. The Petitioner Company was incorporated under the Companies Act, 1956 ['the Act of 1956'] on 13.09.2002 in Tamil Nadu, under the name - 'Refex Refrigerants Private Limited' and was converted into a public company on 30.03.2006, under the name - 'Refex Refrigerants Limited'. Thereafter, on 22.11.2013, the Petitioner Company's name was changed to 'Refex Industries Limited'.

          2.2. The Petitioner Company is a specialist manufacturer and re-filler of refrigerant gases in India and is widely acclaimed in the industry.

          2.3. The Petitioner Company is the owner of the registered trademark 'REFEX' bearing trade mark no. 1559466 in Class 1 w.e.f. 17.05.2007.

          2.4. Respondent No. 2 herein is a company incorporated in Punjab under the Companies Act, 2013 ['Act of 2013'] on 27.01.2017 under the name M/s Refex Hotels Private Limited.

          2.5. On 27.04.2018, the Petitioner Company filed an application under Form No. RD-1 under Section 16(1)(b) of the Act of 2013 ['the Application'] before Respondent No. 1 i.e., Regional Director, Northern Region, Ministry of Corporate Affairs ['Regional Director'] seeking rectification of Respondent No. 2 company's name i.e., M/s Refex Hotels Private Limited on the ground that same includes the word 'REFEX', which is identical to the Petitioner's registered trade mark 'REFEX'.

          2.6. It is stated that the hearing was concluded on 19.06.2018 and vide impugned order dated 23.08.2018, the Regional Director has rejected the Application filed by the Petitioner Company on the ground that though the Petitioner Company is the owner of the registered trademark 'REFEX' in Class 1; Respondent No. 2 is operating in hotel industry and these activities fall under a distinct class under the Trade Marks Act, 1999 ['Trade Marks Act']. Hence, the business activities of Petitioner and Respondent No. 2 are totally different and on this basis the application is rejected.

          2.7. Aggrieved by the aforesaid impugned order, the Petitioner Company has filed the present writ petition.

Submissions on behalf of the Petitioner

3. Mr. Rohan Rohtagi, learned counsel for the Petitioner Company stated that the impugned order has been passed in violation of the provisions of Section 16 of the Act of 2013.

          3.1. He stated that Respondent No. 2's Company name - Refex Hotels Private Limited - is identical with and contains the Petitioner's registered trademark 'REFEX' bearing trade mark no. 1559466 in Class 1 w.e.f. 17.05.2007.

          3.2. He stated that Respondent No. 2's company name is identical with the Petitioner's company name as well as the Petitioner's other group companies, which also includes the name 'REFEX'. He stated that in addition to the Petitioner itself, there are nine (9) other group companies and all of them have 'REFEX' as its distinctive part.

          3.3. He stated that Respondent No.1 has failed to consider that Respondent No.2 Company has been incorporated with the name 'REFEX' without seeking the consent of the Petitioner.

          3.4. He stated that it is well established that a name of the company is undesirable if it resembles a registered trademark of a previous existing company, irrespective of the nature of business carried out by the rival entities. In this regard, he relied upon the judgments passed by the Co- ordinate Benche(s) of this Court in CGMP Pharmaplan (P) Ltd. v. Regional Director Ministry of Corporate Affairs 2010 SCC OnLine Del 2387 at paragraph nos. 16 to 18, Everstone Capital Advisors Pvt. Ltd. v. Everstone Ventures LLP 2019:DHC:1578 at paragraph nos. 14, 16, and 17 and Mondelez Foods Private Limited v. The Regional Director (North) Ministry of Corporate Affairs and Others 2017:DHC:3382 at paragraph nos. 5, 6, 10, and 12.

          3.5. He stated that the impugned order was served upon the Petitioner through Respondent No. 2 vide email on 11.09.2018. He stated that though the Petitioner has approached this Court in the year 2022 for seeking relief of setting aside of the impugned order, the gravity of impact on the business of Petitioner's group of companies due to Respondent No. 2's identical company name is immense and hence, in the interest of justice, the present writ petition may be considered on merits.

4. In response, Ms. Ubhai Bharti Gupta, learned counsel for Respondent No. 2 stated that the impugned order passed by the Regional Director is a well-reasoned order.

          4.1. She stated that the Petitioner is operating in the refrigerant gases industry, which falls under Class 1 of the Trade Marks Rules, 2002, whereas Respondent No. 2 operates in the hospitality industry, which falls under Class 43 of the said Rules.

          4.2. She stated that since the nature of industries in which the Petitioner and Respondent No. 2 are working are different, there is no scope for confusion to arise. She relied upon the judgment of the Supreme Court in Mahendra and Mahendra Paper Mills Limited v. Mahindra and Mahindra Limited AIR 2002 SC 117 to contend that for confusion to arise, the nature of business and services must overlap.

          4.3. She stated that Respondent No. 2 was incorporated on 27.01.2017 in compliance with the Act of 2013 and the company name i.e., 'Refex Hotels Private Limited' was chosen in good faith and reflects the nature of Respondent No.2's business in the hospitality industry.

          4.4. She stated that there are several companies registered under the name which includes the word 'REFEX'. She stated that after the incorporation of Respondent No. 2 in the year 2017, there are five [5] other companies which have either incorporated or changed their name to a new name which includes the word 'REFEX'.

5. In defence, Respondent No. 1 i.e., Regional Director, in its counter- affidavit dated 02.02.2023, has set-up its case as under: -

          5.1. It is stated that the captioned writ petition is ought to be dismissed, at the outset, as the same was not filed within a reasonable time and the Petitioner Company has failed to provide any reasons/justification, whatsoever, for the said delay.

          5.2. It is stated that the impugned order dated 23.08.2018 has been challenged by the Petitioner Company approximately after 4 years of passing of the said order. Admittedly, the said Order was served on the Petitioner on 11.09.2018. However, no reason, whatsoever, has been provided by the Petitioner for filing the Petition at such a belated stage.

          5.3. It is submitted that provisions of the Act of 2013 show that the legislative intent was not to allow two [2] businesses in the same field to have identical name.

          5.4. It is stated that the Petitioner has raised the issue of trade mark. However, admittedly, the scope and ambit of the business of the Petitioner Company is diametrically different from the activity being carried on by the Respondent Company namely 'Refex Hotels Pvt. Ltd.'.

          Moreover, the Petitioner Company is owner of registered trademark of the word 'REFEX' registered in class 1 under the Trademarks Act. Accordingly, it is submitted that the use of the word 'REFEX' by Respondent No. 2 was not intended to deceive the consumers and would not cause any confusion in the minds of the consumers.

Rejoinder Submissions on behalf of the Petitioner

6. In rejoinder, learned counsel for the Petitioner Company stated that there are nine [9] group companies, which are promoted by the Petitioner Company's promoter, whose names are identical to the name of the Petitioner Company. He stated that details of the said companies are provided at paragraph nos. '7' and '8' of the petition. 6.1. He stated that there are no other companies bearing the name 'REFEX' as a part of its corporate name.

Directions

7. This Court has heard the learned counsel for the parties and perused the record.

8. It is evident from a comparison of the names of the parties, that the word 'REFEX' is the prominent and distinctive part of the names of both the Petitioner and Respondent No. 2. The two names are structurally and phonetically identical.

9. The Petitioner was incorporated in 2002 with the mark REFEX as a part of its trade name and the said mark was registered as a trademark for class 1 with effect from 17.05.2007. The Petitioner has pleaded at paragraph nos. '7' and '8' of the petition that there are nine [9] other group companies which have 'REFEX' as its prominent and distinctive part. The names of the companies are enlisted in the petition.

10. The Respondent No. 2 in its written submissions at point B admits that the word 'REFEX' is a coined word and is therefore unique. It was incorporated on 27.01.2017. The Respondent No. 2 while admitting that 'REFEX' is a coined word has submitted that the name was adopted in good faith to reflect the nature of Respondent No. 2's business in the hospitality industry. In its defence, Respondent No. 2 has solely relied upon the fact that the business activities of the Petitioner and Respondent No. 2 are entirely distinct and the Petitioner has no registration for its trademark in the hospitality industry.

11. To appreciate the legal tenability of this defence of the Respondent No. 2, it would be apposite to refer to the judgment of the Co-ordinate Bench of this Court in CGMP Pharmaplan (P) Ltd. v. Regional Director Ministry of Corporate Affairs (supra), wherein the Court held that the powers of the Regional Director [i.e., Respondent No. 1herein] under Section 22 of the Act of 1956 are wide. The Court further opined that the relevant criteria is to determine whether the name registered too nearly resembles another registered name; and if it is so then a direction for changing the name has to follow. The Court held that there is no need to examine whether there is a likelihood of deception or confusion. The relevant paragraphs of the said judgment read as under: -

          "16. The above submissions have been considered. This court finds no error having been committed by respondent No. 1 in coming to the conclusion that the petitioner's name, i.e., "cGMP Pharmaplan P. Ltd." too nearly resembles the name of respondent No. 2, i.e., NNE Pharmaplan India Ltd. The prominent part of both names is the coined word "Pharmaplan". The two names are to be compared as a whole. When so compared, the name of the petitioner too nearly resembles the name of respondent No. 2. In terms of paragraph 28 of the Guidelines, if the dissimilar portions of the names are removed, i.e., NNE and cGMP, then the remaining portion is the identical word "Pharmaplan". The word "Pharmaplan" being a coined word is indeed the prominent and distinctive part of the names of both the petitioner and respondent No. 2. When compared as a whole, it would be apparent that the two names structurally and phonetically too nearly resemble each other.

          17. The decision in Montari Overseas Ltd. [1996] PTC 16 (Delhi), makes it clear that a civil court exercising its powers in terms of the CPC and determining in a passing-off action if one name is confusingly deceptive or similar to another name, is exercising a jurisdiction independent of the jurisdiction of respondent No. 1 in respect of the registering of a company's name. The latter is a power vested in the Central Government in terms of sections 20 and 22 of the Act. While it is true that respondent No. 1 cannot approach the case as it would in a trade mark dispute, it is nevertheless required to come to the conclusion whether the name of which the registration is sought or has been granted too nearly resembles the name of another company. Mr. Chandra is right in his contention that the powers of the Central Government under section 22 of the Act are wider inasmuch as there is no need to examine whether there is a likelihood of deception or confusion. It is enough to examine if the name registered too nearly resembles another registered name. Respondent No. 2 has been able to show that both names too nearly resemble each other.

          18. This court is unable to find anything perverse in the conclusion arrived at by respondent No. 1. Respondent No. 2 had indeed made out a case under section 22(1)(b) of the Act for a direction to the petitioner to change its name by removing the word "Pharmaplan", within a period of three months."

          [Emphasis supplied]

12. The aforesaid judgment was followed by another Co-ordinate Bench of this Court in Everstone Capital Advisors Pvt. Ltd. v. Everstone Ventures LLP (supra), wherein the Court held that irrespective of dis- similarity in business, the registration of respondent/defendant would be violative of Section 15(2)(b) of the Limited Liability Partnership Act, 2008 ['LLP Act']. It also held that powers of the competent authority under Section 15 of the LLP Act are equivalent to Section 16 of the Act of 2013. The Court reiterated that there is no need to examine whether there is likelihood of deception or confusion and emphasized mere resemblance to a registered name is sufficient. The Court further held that The relevant paragraphs of the judgment reads as under: -

          "14. Section 15 of the LLP Act is identical to Section 20 and 22 of the Companies Act, 1956 which are equivalent to Section 16 of the Companies Act, 2013, both of which also do not contain any such restriction, of the previously incorporated company with which the name of the proposed company is identical or resembles with, being in the same business as the business for which the proposed company is being incorporated. I have in International Trade & Exhibitions India Pvt. Ltd. Vs. Regional Director North 2011 SCC OnLine Del 4011 held that the test under Section 22 of the Companies Act, 1956 being restricted to "identical with or too near resemblance" with the name by which a company in existence has been previously registered or with a registered trade mark, could not be read as "identical with and too near resemblance" with name used by company but by which it is not registered. Reference in this regard can also be made to Rule 8 of Companies (Incorporation) Rules, 2014 & Name Availability Guidelines dated 8th July, 2011 issued by Ministry of Corporate Affairs, Government of India.

          ...

          16. This Court, in K.G. Khosla Compressors Ltd. Vs. Khosla Extrakting Ltd. AIR 1986 Del 181 held that (i) a right to incorporate a company in a particular name is a statutory right and there is no unrestricted right in any person to have a company incorporated in his own name or in the name of his family members; (ii) the Central Government, under Section 22 of the Companies Act, 1956 has power to grant only punishment and no power to grant injunction; thus the Civil Court also has jurisdiction in this respect; (iii) passing off action need not merely relate to the goods; (iv) that in the absence of any reason pleaded for adopting the same name, it has to be assumed to have been adopted to cash the goodwill and reputation of plaintiff. In CGMP Pharmaplan Pvt. Ltd. Vs. Regional Director, Ministry of Corporate Affairs (2010) 171 DLT 84, it was held that the powers of Central Government under Section 22 of the Companies Act, 1956 are wider than the powers of the Civil Courts in determining passing off; under Section 22, there is no need to examine whether there is likelihood of deception or confusion and mere resemblance to a registered name is sufficient.

          17. Thus, irrespective of dissimilarity in business, even if any, of the defendant from that of the plaintiff, the registration of the defendant is violative of Section 15(2)(b) of the LLP Act."

          [Emphasis supplied]

13. In addition, a Co-ordinate Bench of this Court in Mondelez Foods Private Limited v. The Regional Director (North) Ministry of Corporate Affairs and Others (supra) held that under Section 20 of the Act of 1956, if a name is identical with or too nearly resembles the name of an existing company, which has been previously registered, it would be deemed to be undesirable and such a name would be liable to be rectified under Section 22 of the Act of 1956. The relevant paragraphs of the judgment read as under: -

          "5. Section 20 of the Act expressly provides that no company shall be registered by a name which, in the opinion of the Central Government, is undesirable. Section 20 (2)(1)(i) of the Act also makes it clear that a name which is identical with, or too nearly resembles the name of an existing company which has been previously registered, would be deemed to be undesirable. In this case, it is ex facie apparent that the corporate name adopted by respondent no.2 is undesirable on the parameters laid down in Section 20 of the Act and thus the ROC was proscribed from registering respondent no.2 under its changed name.

          6. Section 22 of the Act provides for rectification of the name of the company which is identical with or too nearly resembles the name of an existing company which has been previously registered. In terms of Section 22 of the Act, the Central Government could direct the change of a name of a company which is identical to or resembles the name of a previously registered company either suo moto or on an application by a registered proprietor of a trade mark.

          ...

          10. In the given facts, it is undisputable that the changed name of respondent no. 2 is "undesirable" in the context of Section 20 of the Act.

          ...

          12. Section 22 of the Act is not happily worded. Whereas Section 22(1)(i) of the Act, does not indicate that the Central Government is precluded from directing change of name in case the same is found to be undesirable; Section 22(1)(ii)(b) of the Act indicates that the company with an undesirable name is obliged to change its name only on receipt of such directions within a period of twelve months from the date of registration. Further, the introduction of proviso to Section 22(1) must also be given some meaning; plainly, if the owner of a registered trade mark is not precluded from making a complaint within a period of five years of becoming aware of a company with a deceptively similar name, the power of the RD to examine and address such complaint should be read in the statutory provision. However, it is not necessary to examine the same in view of the provisions of the Companies Act, 2013 which are now in force. In terms of Section 16 of the Companies Act, 2013, the Central Government is empowered to issue directions to a company to change its name, if it is similar to the name of a company registered prior in point of time. ...."

          [Emphasis supplied]

14. Reverting to the facts of this case, the operative part of the impugned order is extracted below and in the said part Respondent No. 1 has acknowledged that the prominent word 'REFEX' in the name of Respondent No. 2 is identical with the Petitioner's name. The only ground for rejecting the Petitioner's application is the difference of the business activities of the parties. The operative part of the impugned order reads as under: -

          "From the above submissions made by both Applicant as well as Respondent company and provisions of section 16 of the Companies Act. 2013, it is clear that word 'Refex' in the name of Respondent company is although identical and similar with the first name of Applicant Company. However, the Applicant is owner of registered trade mark "Refex" registered in Class 1 (No. 773327) under Trademarks Act, 1999 which is different from the activity being carried on by the Respondent Company.

          6. Therefore, by considering the above facts and circumstances and in terms of provisions under sub-section (1) b) of section l6 of the Companies Act, 2013 read with Government of India, Ministry of Corporate Affairs Notification no. S.O.4090 (E) dated 19.12.2016, the Applicant Company is not having any trade mark in hotel industry/business class and the activities both Applicant and Respondent Companies are totally different. Hence, no direction be issued on the application filed for rectification/change of name by Applicant Company and the same is hereby rejected and disposed off with no order to cost."

15. In view of the law settled by this Court in CGMP Pharmaplan P. Ltd. (supra) and Everstone Capital Advisors Pvt. Ltd. (supra), this Court is of the opinion that the dissimilarity in the businesses of the Petitioner and Respondent No. 2 was not a relevant criterion for the Regional Director to consider for declining to exercise the jurisdiction conferred upon him under Section 16 of the Act of 2013.

16. The word 'REFEX' as noted above is the prominent part of the name of the Petitioner, which was incorporated in 2002. Subsequently, in the years 2008, 2010 and 2015 its promoter incorporated six [6] other companies, which similarly had 'REFEX' as a prominent part of its corporate name. Thus, as on 27.01.2017, when Respondent No. 2 applied for incorporation with the word 'REFEX' in its corporate name, there already existed seven [7] companies all forming part of the same group, on the register.

          In view of the identity of the prominent and distinctive part of the corporate names of the parties, the name of Respondent No. 2 would be undesirable as stipulated under Section 4(2)(a) of the Act of 2013, which reads as under: -

          "(2) The name stated in the memorandum shall not-- .....

          (a) be identical with or resemble too nearly to the name of an existing company registered under this Act or any previous company law;'

17. The Respondent No. 2's submission that the word 'REFEX' is descriptive of the hospitality services rendered by the company is contradicted by its submissions that the word 'REFEX' is a coined word. In addition, Respondent No. 2's submission that 'REFEX' is descriptive of hospitality service is also unpersuasive and unsubstantiated. The documents on record show that the Petitioner is the prior adopter of this coined word 'REFEX' and, therefore, Respondent No. 2 had no reasonable grounds for adopting this word as a part of its corporate name. The adoption of this name is undesirable within the scope of Section 4(2)(a) of the Act of 2013 as it is identical with the name of the Petitioner.

18. Learned counsel for Respondent No. 2 had averred that there are several other companies on the register with the word 'REFEX' as a part of the corporate name; however, no details of these other companies have been placed on record. This ground raised by Respondent No. 2 is, therefore, unsubstantiated. The Petitioner, on the other hand, has contended that it is only the Petitioner's group companies, which use the word 'REFEX' as a part of the corporate name.

19. Respondent No. 1 in its reply has raised the issue of delay and laches on the part of the Petitioner in approaching the Court on 19.10.2022 against the impugned order dated 23.08.2018. However, keeping in view that for the intervening period of 15.03.2020 to 28.02.2022, the rules of limitation have been suspended by the Supreme Court in its order dated 10.01.2022 passed in the matter of In re; Cognizance for Extension of Limitation Suo Moto Writ Petition (Civil) No. 3 of 2020, this Court is not inclined to dismiss this petition on the said ground.

20. In these facts, the present petition is allowed, the impugned order dated 23.08.2018 passed by Respondent No. 1 is set aside and Respondent No. 2 is directed to change its name to any other name, which is not identical to or resembles the name of the Petitioner or any other existing company within four (4) weeks from today. Respondent No. 2 and its directors are also directed to ensure that Respondent No. 2 changes its name. Respondent No. 1 is directed to issue appropriate directions to Respondent No. 2 for due compliance of these directions.

21. The petition along with pending applications, if any, stands disposed of.