At, Copyright Board
By, RAGHBIR SINGH (CHAIRMAN)
By, YOGENDRA PRASAD (MEMBER) & PROF. M. P. SINGH (MEMBER)
Dr. A.M. Saha, Priyanka Trivedi, Ajay Kumar Shaw
The Order of the Court was as follows :
1. This is an application under section 50 of the Copyright Act, 1957 for expunctior. of registration number A-74541/2005 dated 14.10.2005.
2. Submissions made in the petition are as follows in this paragraph. Petitioner is a proprietary concern. Paragraphs 1 to 12 of the petition describe the particulars about the petitioner as to the goods manufactured by them, volume of turn over and particulars about the trade marks and copyright registrations held by him. Paragraph 13 and onward paragraphs deal generally with the fact of infringement of the marks of the petitioner having come to his notice and the petitioner having warned respondent about the same. No description of the letters sent, if any, has been given. Paragraph 19 onwards deal with the first civil suit filed by the petitioner against the respondent, being Suit No. 767 of 2004 in the City Civil Court at Calcutta, on 14.06.2004. The copy of the plaint placed as Annexure E describes the violation being committed about the marks NICE and NICE TARANG. Subsequent paragraphs upto paragraph 31 deal with the progress of the above case with which we are not concerned. In paragraph 32, the petitioner describes that in the last part of the year 2005 it came to his notice that the respondent has surreptitiously got the impugned label registered as copyright under No. A-74541/2005 dated 14.10.2005. Respondent entered appearance in the above civil suit on 27.7.2004 and the date of application for registration of copyright for the impugned artistic work is 16.5.2005. Petitioner has assailed the registration of the artistic work on the following grounds:-
(a) The Registrar of Trade Marks has wrongly issued certificate under section 45(1) of the Copyright Act, 1957 in face of existing registrations on the Register of Trade Marks in the name of the petitioner-the impugned mark being identical and/or deceptively similar to those marks;
(b) impugned artistic work is not original in terms of section 13(1) of the Copyright Act, 1957;
(c) respondent cannot be the owner of the copyright within the meaning of section 17 of the Copyright Act, 1957;
(d) respondent has made gross misstatements in declaring himself to be the author of the impugned work;
(e) respondent was under a legal duty to give a notice of his application to the petitioner - petitioner being a person having interest in the subject-matter of the copyright and having disputed the rights of the petitioner in it.
3. Respondent in his written statement has generally controverted the averments of the petitioner. He has claimed himself as a prior user of the marks and the petitioner as the usurper. He has submitted that he has obtained the registration for the impugned artistic work after following the procedures prescribed regarding obtaining No Objection Certificate of the Registrar of Trade Marks under section 45(1) of the Copyright Act. 1957.
4. Learned counsel for the petitioner drew our attention to paras 6 and 8 of the petition wherein particulars about the sales of the petitioner for various years and details of existing registered trade marks are given respectively. He drew our attention to annexures at pages 68-70 where the copies of the extant marks of the petitioner are placed and the user claimed in one of his application as advertisement in the Trade Marks Journal is 1.1.70. Similarly, he drew our attention to other documents filed by the petitioner to buttress his claim for an earlier user of the mark. Petitioner issued Caution Notice against the infringers and a copy of such notice published in Hindi Hindustan dated 16.9.03 is placed at annexure 94. A copy of the plaint under the civil suit referred to above is placed at annexure 95. Para 34 of the plaint alleges that the defendant (respondent herein) have not only falsified the plaintiff's established trade marks DEOKI'S NICE TARANG, TARANG in relation to hosiery products, but is in infringement of the copyrights vested in the plaintiff. Learned counsel also assailed the impugned work on the ground of it not being an original work under section 13 of the Copyright Act, 1957. He disputed the ownership of the respondent under section 17 of the Copyright Act, 1957, Further, he claimed the benefit of Order VIII, rule 5 of the Code Of Civil Procedure, 1908 for the petitioner.
5. Learned counsel for the respondent generally denied the averments of counsel for the petitioner.
6. Impugned registration has been assailed on various grounds. In the present matter it is very clear that when the respondent moved the application for registration of label mark NICE TARANG VEST (Vest in smaller phonts) per his application dated 16.5.2005 received in the office of the Registrar for Copyrights per Diary No. 1395/2005-CO/A on 29.6.2005, a civil suit as referred to above had already been filed against him on 14.6.2004 in which the respondent had entered an appearance as back as on 27.7.2004. The subject matter of the suit related to copyright in the impugned artistic work. Thus he was well aware about the interests of the petitioner in the matter. Petitioner in his civil suit had unambiguously mentioned about his interest in the impugned marks. Rule 16(3) of the Copyright Rules, 1958 creates a statutory duty
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upon the applicant (respondent herein) to give notice of his application to every person (petitioner herein) who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it. Respondent is in clear violation of the statutory duty cast upon him and thus the registration is liable for expunction on this ground only. For this reason, it is not necessary for us to go into the examination of the other aspects of violations agitated by the petitioner. 7. Accordingly the Registrar shall expunge the entry from register. No orders as to costs.