The Copyright Act, 1957, provides for a rectification of the register, under S. 50. The section reads:
Rectification Of Register By Copyright Board: The Copyright Board, on application of the Registrar of Copyrights or of any person aggrieved, shall order the rectification of the Register of Copyrights by ---
- the making of any entry wrongly omitted to be made in the register , or
- the expunging of any entry wrongly made in, or remaining on, the register , or
- the correction of any error or defect in the register.
Filling an application under the section, an associated dispute came up calling for the Copyright Board' attention vide Jupiter Match Work v. Kaveri Match Works & Anr. 2008(37)PTC 613(CB). Jupiter claimed to be proprietor the label HORSE and a device of a horse standing on two legs. Jupiter was also involved in the business of matches vide the mark 'RED HORSE', also with a horse standing on two legs. The mark being registered under the Trade and Merchandise Marks Act, 1958 was registered continually since 1980 and claimed to have been put to use in 1957.
Jupiter alleged that Kaveri had suppressed material facts and obtained wrongly and erroneously the certificate for use as under S. 45 (1) of the Copyright Act, 1957. Jupiter also averred that the claimed author of the work could not be the author since it was quite apparent that the work of Kaveri was a virtual copy of the label of Jupiter. In pursuance to the letter of the Registrar of Copyright, seven copies of the infringing marks to be expunged from the Register were annexed.
The Office of the Registrar in this pursuance asked Kaveri to file a written statement with a copy to Jupiter, but the same was not complied by Kaveri. During the hearing, adjournment was requested on the ground that the notice had been received late. Consequently the copyright board was made aware of the non-filling of the written statement. A pre-existent assignment deed was also averred of between Kaveri and another and they agreed to supply a copy of the same however the same was not done, neither by Kaveri nor the assignee. The Board taking a serious view of the matter agreed to the submission of the arguments in written by both the parties. Kaveri failing to submit written submissions as well led the Board to proceed accordingly on the basis of material available to them.
The Board noted that Copyright Registration had been obtained on the Horse standing on two feet and that the trademark registration had been renewed from time to time by Jupiter. On the other hand, Kaveri had obtained trademark registration from time to time.
Comparing the portrayal and the label of the two marks, it was found that the horse on the label of Kaveri was a verbatim copy of that of Jupiter, except that the same was placed in the opposite direction to that of Jupiter's. The Board opined such a change to be significantly small, but opined that a comparison of such traits would have been enough to conclude that the impugned mark causes deception and hence be removed from the Register.
Taking into consideration that the Copyrightability of the mark was being brought into question, the Board opined that the holder of registration had certain duties. The first amongst these was stated to be the duty to defend his registration, at which they opined that Kaveri had failed to do. They took note of the fact that "artistic labels" were a subject of copyright and were being used to identify trade identity or source of goods being manufactured. Referring and relating to Ciba Ltd. v. M. Ramalingam [AIR 1958 Bom 56] and looking at the ratio therein the Board concluded that the case of Ciba being on Trade Mark Law, where an elaborate mechanism of adversial contest exists before the grant of registration, while the case at hand dealt with Copyright law, wherein the same is absent. The Board held that in such an event, the Registrar has to rely to a great extent on what was stated by the applicant and that it was incumbent upon the holder of the Registration to defend his mark. In the view of the holder of registration was said to have failed to have defend his registration and impugned entry was stated not liable to continue on the register and ordered the Registrar to expunge the same.
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