The Judgment was delivered by : B. K. SHARMA, CHAIRMAN
B.K. Sharma, Chairman
1. This petition has been filed under Section 50 of the Copyright Act for the rectification of the Copyright Register by expunging Registration No. A 8141/72 made in the name of the respondents.
2. The Petitioner is Hindustan Lever Limited a company duly incorporated under the Companies Act. The petitioner states that the trade mark and artistic logo LUX was created for and adopted by Lever Brothers Limited of Port Sunlight, Cheshire, England and was registered as a trade mark in 1931 before the Registrar at Calcutta. A label bearing the trade mark was also registered in 1931. Both were extensively and continuously used by Lever Brothers Limited. In 1934 Lever Brothers Limited assigned the trade mark LUX as well as the label in favour of Lever Bros. (India) Limited which was a company incorporated in India. In 1956 Lever Bros. (India) Limited adopted a new name Hindustan Lever Limited. Thus, the LUX trademark and the label for LUX toilet soap became the property of the present petitioner. All these registrations and assignments are sought to be proved by Annexure-A, Annexure-B, Annexure-C and Annexure-D is evidence of change of name of Lever Bros. (India) Limited.
3. The petitioner claims that on the basis of the registration of trademark and label and their due assignment in its favour it is the proprietor of the trademark LUX and owner of the copyright in the original artistic work containing the LUX logo as represented and displayed in Annexure-A. It also claims to have an exclusive right to use and produce the same in any material form under Section 14 of the .
4. The petitioners submits that the Respondent, M/s Bishwanath Hosiery of Tagore Street, Calcutta has fraudulently and by suppressing material facts obtained registration of copyright in the impugned artistic work titled LUX under Copyright Registration No. A-8141 of 1972. The Registration has been given as Annexure E to the petition. It is stated by the petitioner that the impugned level is a colourable and slavish imitation of and substantial reproduction of the original artistic work belonging to the petitioner.
5. The petitioner submits that by a perusal of the two labels it would be evident that the Respondent has copied the LUX logo of the petitioner and thereby committed infringement of the copyright of the petitioner as defined in Section 51 of the . The Respondent as well as its proprietor Shri Giridhari Lal Todi has made a misrepresentation and committed fraud upon the Registrar of Copyright by claiming that the impugned logo and label were an original artistic works authored and designed by Shri Giridhari Lal Todi.
6. The petitioner has in the petition submitted that it has objected to the use of the trademark LUX by the Respondent in relation to under-garments and has taken steps to oppose such use including filing opposition to the trademark application No. 463993 in class 25. It has also taken steps to seek rectification of Trademark Registration No. 281016 in class 25.
7. The petitioner further states that the adoption and use of the impugned trade mark LUX by the respondent is solely motivated to earn easy and illegal profits by causing confusion and deception among the members of the public and the trade leading to passing off their goods for those of the petitioner. The confusion or deception is inevitable since the goods of the petitioner, viz. toiletries and those of the respondents are cognate and allied in nature, and are sold through common trading channels and across the same selling counters.
8. The petitioner states in the petition that register should be rectified because the impugned work is not an original work but is a substantial and fraudulent reproduction of LUX logo of the petitioner.
9. The petitioner prays that the Copyright Registration No. A-8141/72 be infringed.
10. The respondents filed a detailed written statement. In the written statement it is stated that the petitioner has no locus standi to maintain the petition . Their first ground is that Hindustan Lever Ltd. (the petitioner) and Lever Brothers Limited are distinct legal entities and that the petitioner cannot prosecute the case for Lever Brother Limited. They also deny the registration of the trade mark in favour of Lever Brothers Limited. It is also stated that the registration is no more valid. It is also denied that the logo was registered with the registrar at Calcutta on 1st April, 1931. It is stated that such registration does not confer any right, title or interest in favour of Lever Brothers in respect of the art work or artistic design within the artistic logo.
11. The Respondent deny that the logo is an original artistic work and that no skill has been applied by the author of the logo. It is stated that it is a mere reproduction of the word LUX in cross stitch pattern.
12. The Respondent do not admit that toilet soap packed in LUX label was marketed in India since 1931. They further deny that the LUX label was advertised and it acquired any goodwill and reputation in India. They also deny the assignment of the label and logo infavour of Lever Brothers (India) Limited. The Respondent deny all that has been included in the petition and do not admit the validity of the registration of various LUX trade marks in favour of the petitioner or its predecessor.
13. The respondents states that the impugned artwork is not a colourable or slavish imitation of the petitioner's work and it has not committed infringement of copyright. The respondent has pointed out the differences between its artwork and that of the petitioner. It has denied having committed fraud or misrepresentation. The respondent has stated that it is using the LUX mark since 1957 and got registration for it as a trademark in 1972 for goods belonging to class 25.
14. The petitioner have filed an affidavit in rejoinder and also an affidavit by one of Shri Ashok Gupta, General Manager supported by some documents. One of the documents is a declaration filed on 2nd October, 1905 before a notary public at Liverpool, England in regard to the use of LUX trade mark. Another document of 1931 contains a representation of the LUX label. The rejoinder states that the trade mark LUX is an invented mark, well known nationally and internationally having a formidable goodwill and reputation. The petitioner has also submitted he certificate of incorporation and change of name. The petitioner has submitted a statement showing yearwise sales turnover and advertisement expenses of LUX mark from 1935 to 1984. In 1984 the advertisement expenses in India were Rs. 71, 78, 000 and the sales turn over in India was Rs. 84, 92, 91, 000/- in 1991 they were Rs. 22, 43, 396, 000 and 3, 67, 17, 000 respectively. A number of advertisements published by the petitioner have been annexed. They show the LUX mark made in a distinctive manner it has enclosed a copy of some portions of a magazine covering a programme sponsored by the petitioner and also displaying the LUX Trade mark in preceding years. It has also submitted three certificates showing sales turn over and advertisement expenses from two firms of Chartered Accounts. The petitioner has also filed an affidavit of Shri Alan J. Almeida an Ex Employee aged about 75 years in support of its various contentions.
15. The respondents did not file any affidavit in support of their case.
16. The Board heard the arguments of both the parties on the 9th November, 2000 at Panaji, Goa, but did not pass any order. The present Board was constituted on 22nd February 2001. The Board therefore listed the matter for its sitting on 27th June, 2001. On that date the counsel for the petitioner was present. The Respondent did not attend the hearing. The advocate for the Respondent sent a Communication to the Registrar of the Copyright Board. In the communication it took the plea that fixing the case for hearing was illegal and asked the Registrar to communicate to the respondent the order passed by the Board and further asked the registrar not to proceed with the hearing of the matter.
17. The Board thought it fit to give one more opportunity to the Respondent. In the order passed on that day it was clearly stated that no final order was pronounced by the earlier Board. The order was duly communicated to the Respondent. In order to expedite disposal the matter was listed for 6th September, 2001. On that day the Respondent again chose to be absent.
18. The Board therefore decided to pronounce order on the basis of written submissions. This was communicated to both the parties.
19. The Respondent did not submit written arguments. The matter was listed again for the sitting on 1st November, 2001, thus, the respondent was given 3 opportunities to presents its case orally or in writing either in person or through an advocate.
20. The Respondent again wrote a letter on the 25th October, 2001 to the Registrar to communicate the order of the Board.
21. We would like to record that the communications received from the Respondent use language and contain threats which are unbecoming to say the least. Instead of writing nasty letters it could have very well appeared before the Board and presented its case. It failed to understand this simple situation that had the earlier Board passed an order the case would have been finally disposed.
22. It was evident that the Respondent is unwilling to appear to give written submissions. The matter was fixed for his benefit on 3 occasions viz. 27th June, 2001, 6th September, 2001 and 1st November, 2001.
23. In the circumstances the Board had no choice but to decide on the basis of the petition, the written statements and the evidence before it.
24. The Board has carefully gone through the record to ensure that the party which has not appeared before it is not placed at a disadvantage.
25. From the pleadings it emerges that the petitioner has been using the trade mark LUX which was registered in its name in India on 1.4.1931. Hence, the petitioner is an aggrieved person and has a right to more the Board.
26. The trade mark LUX with crisscross pattern comprising black and while squares to form the three letters which spell LUX was registered with the Registrar at Calcutta on 1st April 1931. The trade mark has been in use by Lever Brothers Limited even before the 2nd day of October 1905. This is evidence by the declaration made on that date in England which is duly notarized.
27. The petitioner has furnished the deed showing assignment of the trade mark LUX and the LUX label by Lever Brothers Limited to Lever Brothers (India) Limited on 29th November, 1934. Later with effect from 1st November, 1956 the company Lever Brothers (India) Limited acquired a new name viz. Hindustan Lever Limited. This name still continues. The change was duly permitted under the . Thus, the trade mark LUX and the LUX label and many other trade marks became the property of the present petitioner.
28. The LUX mark was registered in India on the 9th Oct. 1943 under the Trade Marks Act, 1940 in the name of Lever Brothers (India) Limited. It has been regularly renewed and the last renewal on record before us in the name of the petitioner was made in 1994.
29. The petitioner has submitted copies of numerous advertisements and an article published in a magazine "Hamara" which show and establish that the brand LUX was introduced in India in 1929 featuring a film star Ginger Rogers. In 1941 the first Indian actress endorsed it. Her name was Leela Chitnis. Since then advertisement showing the face of a film star alongwith the endorsement are regularly being published by the petitioner. The petitioner has submitted certificates from 3 firms of Chartered Account certifying the LUX turnover and the amount spent on advertisement during every financial year. In the year 1991 the amount spent on advertisement on LUX was 3, 67, 17, 000/- in 1997 the expenditure was 19, 73, 40, 000/- which is not a small sum.
30. Thus, the petitioner has been able to prove that is the proprietor of the mark LUX and the label LUX drawn in a particular cross stitch or crisscross pattern, that it is being used by the petitioner and its parent and predecessor companies since at least 1905, that it is registered as a mark in its name under the Trade Marks Act and that it is spending big sums to keep the mark alive and within the notice of the public.
31. LUX according to the dictionaries is a unit of illumination. It has no other meaning. It may even be taken to be a coined word like Kodak or Dalda. The manner in which LUX is written appears to be unique. It is made of small squares. All lines are straight. None is curved. Usually U is written with set curves. But in the LUX mark the letter U is formed by straight lines. Each letter has a proportionate thickness. The thickness is filled with small squares. Usually three squares cover the thickness. Out of which one is of different shade. In the length also alternate squares are of different shades. Thus, it may concluded that LUX is an original artistic work and deserves protection under section of the .
32. The respondent too is entitled to seek protection if he is able to establish that the LUX mark that it has got registered under the is an original artistic work. On visual examination, it is noticed that the respondent has employed the square assembling technique to build the three letter of LUX. The respondent uses three building blocks to form the thickness. Alternate squares bear a different shade. The respondent has not given any reason for selecting the word LUX which does not carry any meaning. The Respondent has selected the word LUX because it must have come across the numerous advertisements, labels, wrappers and hoardings displayed by the petitioner. The design and pattern of the formation of the letters leads to only one conclusion - that it is based on or copied form the LUX mark owned by the petitioner.
33. The Respondent got the registration in its name in the year 1972 at a time when Section 45 was not amended by Act 23 of 1983. At that time the law did not require the application for registration to be accompanied by a certificate from the Registrar of Trade Mark that no mark identical with or deceptively similar to such artistic work has been registered under that Act, in the name of any person, other than the applicant. The Delhi High Court has in Prem Singh v. M/s. Ceeam Auto industries,1990 AIR(Delhi) 223 :1990 PTC 149 (Del), applied the principle of the amending Act of 1983 to the case before it. Adopting the same principle and applying it to the present case the LUX mark would not have been certified by the Registrar of Trade Mark because of the registration of the LUX Trade Mark with the Registrar of Trade Marks. Thus in view of the judgement of the Delhi High Court the mark LUX does not deserve to remain in the Copyright Register. We have also been guided by the observations made by the Supreme Court in R.G. Anand v. Delux Films,1978 AIR(SC) 1613 : PTC (Suppl)(1) 802(SC). The court had observed in para 15.
"It is also clear that it is not necessary that the alleged infringement should be an exact or verbatim copy of the original but its resemblance with the original in a large measure, is sufficient to indicate that it is a copy."
34. In the present case it is clearly established that LUX mark was used since 1905 and its spelling, form, contours, colours and composition were for everyone to be seen. The respondent got his mark registered in 1972. The long span of years between the first year of its use by the petitioner and its registration by the Respondent leaves title room for doubt. The conclusion that it is a copy or imitation becomes inevitable. The respondent has copied the material and substantial features of the LUX trade mark. The variations are minor. The copy comes so near to the original that if a person looks at the registered work of the Respondent his mind would immediately recollect the LUX mark and label used by the petitioner. The two works are to be compared from the point of view of an average consumer. He would have neither the time nor the disposition to make a line by line or stroke by stroke comparison of the two works. His examination would not be meticulous. Hence, minor dissimilarities are to be discounted. The effect produced on the person who sees the mark of the respondents the test of its being a copy or original. The Supreme Court has laid down in R.G. Anand v. Dulux Films,1978 AIR(SC) 1613 : PTC (Suppl)(1) 802(SC) para 46.
"One of the surest and safest test to determine whether or nor there has been a violation of Copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original."
35. Our conclusions are thus based on the proposition laid down by the Supreme Court. Following the principles laid down by the Supreme Court in R.G. Anand v. Delux Films,1978 AIR(SC) 1613 : PTC (Suppl)(1) 802(SC) and by the Delhi High Court in Prem Singh's case,1990 AIR(Delhi) 223 :1990 PTC 149 (Del), and applying them to the present case we hold that the work which has been registered in the name of the respondent is subsequent in point of time and that of the petitioner is anterior. The time span between them is very long-covering more than 50 years. The petitioner's work was widely advertised and used and was visible even to the common man much before 1972 when the respondent obtained registration. The Respondent had plenty of opportunity to copy the work. Looking and comparing the two works and applying the test of the average man we conclude that the basis, material and substantial features are the same in both the works. Hence the work of the respondent is but a copy. It is not an original work and has no claim to be retained in the Register.
36. Accordingly it is ordered that the Register of Copyrights be rectified by expunging the work Registered with Registration No. A-8141/72 in the name o
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f Gridhari Lal Todi, proprieto the Calcutta High Court that as the assignee was not registered under the Indian Patens and Designs Act, 1911, the assignee was not a patentee within the meaning of the said Act. As already stated there was no provision in the Act of 1911 corresponding to Section 68 of the Act of 1970, these judgments are not applicable to the case arising under the Act of 1970. Prima facie therefore it appears that the plaintiff being the assignee of the patent in question under deed dated 22nd May, 1979 has locus standi to institute the present suit. 7. For the grant of temporary injunction, principles applicable to the infringement of Patent actions are that there is a prima facie case, that the patent is valid and infringed, that the balance of convenience is in favour of the injunction being granted and that the plaintiff will suffer an irreparable loss. It is also a rule of practice that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would, for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than six years old and there has been actual user it would be safe for the court to proceed upon this presumption. Terrell on the Law of Patents Twelfth Edition in para 830 has observed as follows: " Prima facie evidence of validity : The plaintiff must first establish such facts as will satisfy the court that there are strong prima facie reasons for acting on the supposition that the patent is valid. The most cogent evidence for this purpose is either that there has been a previous trial in which the patent has been held to be valid, or that the patentee has worked and enjoyed the patent for many years without dispute, or it may be that as between the parities the plaintiff is relieved from the onus of establishing validity, as where the defendant has admitted it or is so plac r of M/s. Biswanath Hosiery.