India: Copyright Registration Of An Artistic Work Is Extraneous For Proving Its Prior Use As Trade Mark

Last Updated: 23 April 2019
Article by AMLEGALS  

IN THE HIGH COURT OF DELHI AT NEW DELHI

M/s. Khushi Ram BehariLal v. M/s. Jaswant Singh Balwant Singh.

                      [W.P. (C) 7983 of 2012 & CM APPL 19969 of 2012]           dated: 21.01.2019

FACTS

M/s. Khushi Ram Behari Lal (hereinafter referred to as "the Petitioner") was established in the year 1978 as a partnership for carrying on the business of processing, marketing and exporting of rice.

Since the year 1978, the Petitioner was constantly using the trademark TRADE BRAND WITH DEVICE OF TRAIN in relation to the said goods and business.

Thereafter, the firm was taken over by M/s. Khushi Ram Behari Lal Ltd. as a going concern along with Trade Mark, other assets and properties with effect from 01.04.1996. Further, the name was changed to M/s. KRBL Ltd.

Therefore, in order to get the statutory right over the Trade Mark, an application for registration in Class 30, of Schedule IV under the then Trade & Merchandise Marks Act, 1958, was filed by the Petitioner before the Registrar of Trade Marks in 1993.

The Trade Mark Registry thereafter advertised the said Trade Mark in the Trade Marks Journal No. 1224 on 01.06.2000.

Subsequently, M/s. Jaswant Singh Balwant Singh (hereinafter referred to as "the Respondent") filed an objection against the application for registration of Trade Mark on the ground that the Respondents were engaged in the business of Rice under the Trade Mark "TRAIN".

The Registrar in turn rejected the application for registration of Trade Mark on 12.10.2006.

This led the Petitioner to appeal before the IPAB.

The IPAB also dismissed the said appeal on the ground that the Respondents have registered the said mark and been using it prior in point of time.

The IPAB also took into consideration the Copyright Registration of the Respondents over the artistic work "TRAIN" for establishing the prior usage.

Aggrieved by the order of IPAB, the Petitioner had approached the Hon'ble Delhi High Court challenging the order dated 18.05.2012 passed by IPAB.

ISSUE BEFORE HIGH COURT

The sole issue for consideration before the Hon'ble Delhi Court was:

Whether the order passed by the Registrar and Appellate Board rejecting the registration of Trade Mark on the basis of Copyright registration of artistic work 'TRAIN' is maintainable.

OBSERVATION

The Hon'ble High Court observed that the IPAB ignored the vital facts.

The Court further observed that the IPAB has erred in holding that there would be confusion and deception amongst the general public because while deciding any objection u/s. 11 of the Act,  the Trade Mark was required to be seen as a whole.

The Court observed that the registration of the Respondents pertain only to the word "TRAIN" while on the other hand the Petitioner's Trade Mark is a Mark having multiple distinguishing features.

It was then observed by the Court that the IPAB erred in taking into consideration the fact that the Petitioner was using the said Trade Mark for almost 22 years without any objections or interruptions and neither there has been any confusion nor deception reported by the Respondents.

"Thus, the Appellate Board ought to have appreciated the special circumstances that exist in favor of the Petitioner for exercise of their discretion under Section 12 of the Act".

The Court also observed that the IPAB failed to consider the fact that the Petitioner continued to be exclusive user of the Trade Mark since its adoption and has built a tremendous goodwill.

The goods of the Petitioner are highly in demand not only in domestic market but also in the international market on account of its superior quality whereas the Respondents are only a dealer or commission agent in Amritsar.

The Court further observed that the IPAB has also erred in ignoring the discrepancy in the telephone numbers of Respondent on Exhibit No. 37 & 33.

Moreover, the IPAB also failed to observe that the impugned bills i.e. Exhibit No. 5, 14, 28, 29 & 30 having the Trade Mark "TRAIN" appearing on them do not correspond to the sale of Rice.

"Thus, it seems that the impugned label of the respondent was imprinted on the impugned bills, in one go without taking into consideration the description of articles/goods mentioned thereon".

The Court also observed that firstly, various invoices produced by the Respondent from 1985 to 2002 are all having signature of only one person which is highly improbable and secondly, it appeared to be made at the same time at one go.

The Court further after going through scanned bills, observed and held that the Respondent was not trading in Rice and was rather trading in sugar and husk.

CONCLUDING VIEW

The Court held that the bills and invoices produced by the Respondents are forged and it also rejected the reliance placed upon by IPAB on the Copyright Registration of the artistic work for evidencing the use of the Trade Mark by holding that-

"On perusal of the documents on record, I have no hesitation to say that the Learned Appellate Board has relied on the Copyright Registration of the Respondents under No. A44877/84. The Copyright Registration of the art work of "TRAIN" brand is extraneous for the purpose of proving the use of subject Trade Mark. The said Trade Mark under registration fulfils the requirement for registration as prescribed in Trade Marks Act, 1999. The application for registration is not hit by Section 9, 11 and 18 of the Act and without prejudice the petitioner is entitled to the benefit of Section 12 of the Act".

Therefore, after observing that the registration of the impugned Trade Mark had fulfilled all the criteria for its registration under the Trade Marks Act, 1999, the Court held that the Petitioner was very well entitled to the benefit u/s 12 of the Act for concurrent registration.

The Hon'ble Court thus held,

"In view of the above facts discussed and legal position, I hereby set aside the impugned order dated 18.05.2012 passed by the Appellate Board and consequently, the application for registration of the Trade Mark "TRAIN" under No. 609141 in Clause 30 shall be proceeded for registration of the Trade Mark "TRAIN" brand for basamati rice. The writ petition is disposed of in the aforesaid terms".

REASON OF JURISPRUDENCE

The Court reasoned by reiterating the principle propounded in case of

  1. Corn Products Refining Co. V. Shangrila Food Products Ltd AIR 1960 SC 142 and in case of
  2. Gandhi Scientific Company v. Gulshan Kumar 2009 (40) PTC 22 (Del.)

AMLEGALS REMARKS

The Court's ruling in the instant case upholds the preceding judgments relating to the same issue as exists in the present case and determines the judicial intent of the provisions of Section 12 of the said Act.

The decisions that have been relied upon by this Hon'ble Court are standing precedent in matters related to the issue that arose in the present matter.

The jurisprudence appropriated by this Court showcases the shared intent of the various stratum of the Indian Judiciary towards the determination of the procedure applicable in similar circumstances associated with matters of concurrent registration.

The Court has tried to go into each and every aspect and the failure of the IPAB while delivering the order dated 18.05.2012, to provide justice to parties and promote the legislative intent.

Due importance was given to the settled principle that merely because there exists a copyright over something does not necessarily mandates protection for it under the Trade Marks Act, 1999.

To add to that, the Respondent had relied upon a number of false evidences to prove their case which was also categorically pointed out by the Court and it also made it easier for the Court to reject their case.

This balanced approach of the Court would go a long way in ensuring that the object and purport of the provisions of the said Act are protected.

For queries/feedback/comments, please feel free to connect with us on chaitali.sadayet@amlegals.com

The content is purely an academic analysis under "Legal intell igence Series".

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Disclaimer: The information contained in this document is intended for informational purposes only and does not constitute legal opinion, advice or any advertisement. This document is not intended to address the circumstances of any particular individual or corporate body. Readers should not act on the information provided herein without appropriate professional advice after a thorough examination of the facts and circumstances of a particular situation. There can be no assurance that the judicial/quasi-judicial authorities may not take a position contrary to the views mentioned herein.

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