In a recent decision [1], the Bombay High Court exercised its jurisdiction under Section 50 of the Copyright Act, 1957 (“Act”) and directed the cancellation of a copyright registration of a product packaging obtained by Respondent by flouting the procedural norms laid down under the Copyright Rules, 2013 (“Copyright Rules”).
Other than the routine rectification, the Bombay High Court’s order operates as a judicial correction of an unjustified copyright registration of its product packaging that had been secured by Respondent in contravention of the principles of copyright law being that of originality and prior use.
The Petitioner had initially preferred a Rectification Application before the Intellectual Property Appellate Board, Chennai, seeking cancellation of the Respondent’s copyright registration in respect of the impugned product packaging. However, pursuant to the abolition of the Intellectual Property Appellate Board in 2021, the said proceedings stood transferred to the Bombay High Court for adjudication.
The Petitioner, is a confectionary business in Madhya Pradesh and has carved its niche in the market through its unique selling point of offering lollipops and other confectionary shaped in distinctive kulfi-shaped moulds.
The Petitioner having invested in the protection of its intellectual property, secured registration of its kulfi-shaped moulds under the provisions of the Designs Act, 2000 and thereafter proceeded to seek trademark registration under the Trade Marks Act, 1999 in respect of the said moulds as well as its product packaging. Owing to the attempts by its competitors to imitate and pass off their confectionary products, the Petitioner issued a caution notice in the newspaper cautioning members of the public against acts of impersonation.
Despite the issuance of the caution notice, the Respondent proceeded to poach certain employees of the Petitioner who had been directly involved in the research and development of its kulfi-shaped confectionery products. Aggrieved by such conduct, the Petitioner was constrained to lodge a police complaint in respect thereof.
In a further attempt to impersonate the Petitioner’s unique products, the Respondent sought to obtain trademark registration and copyright registration in its own name in respect of an artistic work namely the packaging of its product being Tamarind Kulfi which featured a distinctively similar kulfi-shaped design. The said copyright registration was granted by the Registrar of Copyrights without any notice to the Petitioner.
In the judgment delivered by Hon’ble Shri Justice Arif S. Doctor, the Hon’ble Bombay High Court directed the removal of the Respondent’s impugned copyright registration pertaining to its product packaging from the Register of Copyright reiterating assertion of judicial intervention in cases of oversight in intellectual property laws.
The Court observed that the impugned copyright registration substantially comprised the essential features of the Petitioner’s design registered under the Designs Act. The Court emphasized on several aspects while directing the cancellation of the copyright registration. They are as follows:
- Non-compliance with the Rules prescribed under the Act: The Hon’ble High Court observed that the trademark and Designs Act registrations obtained by the Petitioner were enough to demonstrate that no mark identical or deceptively similar to its registrations could have been granted without being accompanied by a certificate from the Registrar of Trademarks in accordance with Section 45 of the Act. The Petitioner placed reliance upon the decision of the Delhi High Court in Ershad Sole Proprietor Ek Agencies vs Registrar of Copyrights & Ors. [2022 SCC OnLine Del 2815]
- Subsistence of Copyright lies in original work: The impugned copyright registration could not have been granted in the absence of the essential characteristic of originality. The features forming the subject matter of the impugned copyright had already been conceived, developed and protected by the Petitioner, and therefore could not be legitimately claimed by the Respondent as an “independent author”. Further, the impugned registration lacked the authorisation from such purported author.
- Failure to comply with the procedural requirements under the Copyright Rules: The Hon’ble High Court observed that the impugned registration was procedurally flawed in the absence of any notice of the application for copyright registration as mandated under Rule 70 (9) of the Copyright Rules. The Hon’ble Court further held that the caution notice published by the Petitioner sufficiently established that the Petitioner was “a party having interest in the subject matter of the work” and was therefore entitled to such notice. The Petitioner placed reliance on the decision of the Delhi High Court in M/S. New Bharat Overseas v. M/S. Bhagwati Lacto Vegetarian Exports Pvt. Ltd. And Ors. [O.(COMM.IPD-CR) No. 843 of 2022]
- Initial user of Copyright: The Petitioner has been enjoying and exercising substantial intellectual property rights in respect of the subject products since as early as 2012. In stark contrast, the Respondent only procured the moulds in or about 2015. This belated entry not only underscores the Respondent’s lack of originality but also evidences a clear attempt to appropriate the Petitioner’s established goodwill and pass off its goods as those of the Petitioner.
- Target Consumer and Applicable Test: The Petitioner’s products are primarily targeted at children, as well as non-literate or semi-literate consumers. Thus, the test of distinctiveness must be assessed from the perspective of such class of consumers who rely more on visual impressions. The kulfi-shaped confectionary being an essential and distinctive feature of the Petitioner’s products has the utmost significance and the similar adoption by Respondent no. 1 could not be applied uniformly and must be viewed from the perspective of such consumers.
The decision of the High Court reaffirms that the copyright register is sacrosanct and must only protect the legitimate copyright entries in due compliance with the provisions of the Act. The Court thoroughly applied the aforesaid principles and directed the Registrar of Copyrights to cancel and remove the Respondent’s impugned copyright registration from the register of copyrights.
Bridgehead Law Partners represented the Petitioner through Mr. Ranit Basu, Ms. Maitri Malde, Ms. Dua Shaikh and Ms. Harshada Nirmal and secured a favourable order.
For more information about the aforesaid order or its implications you may write to us at: solutions@bridgeheadlaw.com.
Ranit Basu | Partner
Harshada Nirmal | Associate
Views expressed are personal to the authors and do not constitute as legal advice.
[1] Bombay High Court: Commercial Miscellaneous Petition no. 70 of 2022: Naughty Foods Pvt. Ltd. vs Deepak Dariyani Trading as Asha Confectionary and Anr.