Bombay High Court/ Ordinary Original Civil Jurisdiction In Its Commercial Division
Interim Application (L) No. 5011 of 2020 /In Commercial IP Suit No. 2 of 2021.
Sub: Copyright registration is not compulsory to sue for infringement-Mumbai High Court
FACTS OF THE CASE :
Sanjay Soya Pvt. Ltd. (SSPL), which had approached the Bombay High Court against Narayan Trading Company (NTC) with a plea seeking reliefs for copyright infringement in relation to the artistic work of SSPL in the label of its product. SSPL claimed that NTC entirely lifted and illicitly copied their registered label mark. SSPL claimed that the two marks were visually and conceptually identical, and deceptively similar to SSPL’s mark. It was used in relation to identical or similar goods so that NTC could trade and encash upon the goodwill of SSPL.
SSPL sought interim injunction for both trade marks and copyright infringement, passing off and for the appointment of a Court Receiver to seize and seal NTC’s products under the offending or rival label mark and artistic work.
NTC denied that SSPL had any copyright in artistic work. NTC maintained that the label mark is a registered trade mark and therefore cannot be an artistic work. This necessarily implies that trade mark registration and copyright protection are distinct and disjunctive. A person may have one or the other but cannot have both, it was argued.
LET’S CONSIDER SOME APPLICABLE PROVISIONS OF COPYRIGHTS ACT,1957.
Section 44 in the Copyright Act, 1957
44. Register of Copyrights.—There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed.
Section 45 in the Copyright Act, 1957
45. Entries in register of Copyrights.—
(1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights:
Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant.
(2) On receipt of an application in respect of any work under sub-section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.
Section 46 in the Copyright Act, 1957
46. Indexes.—There shall be also kept at the Copyright Office such indexes of the Register of Copyrights as may be prescribed.
Section 47 in the Copyright Act, 1957
47. Form and inspection of register.—The Register of Copyrights and indexes thereof kept under this Act shall at all reasonable times be open to inspection, and any person shall be entitled to take copies of, or make extracts from, such register or indexes on payment of such fee and subject to such conditions as may be prescribed.
Section 48 in the Copyright Act, 1957
48. Register of Copyrights to be prima facie evidence of particulars entered therein.—The Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts therefrom certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or production of the original.
Section 49 in the Copyright Act, 1957
49. Correction of entries in the Register of Copyrights.—The Registrar of Copyrights may, in the prescribed cases and subject to the prescribed conditions, amend or alter the Register of Copyrights by—
(a) correcting any error in any name, address or particulars; or
(b) correcting any other error which may have arisen therein by accidental slip or omission.
Section 50A in the Copyright Act, 1957
Section 50A. Entries in the Register of Copyrights, etc., to be published.—Every entry made in the Register of Copyrights or the particulars of any work entered under section 45, the correction of every entry made in such register under section 49, and every rectification ordered under section 50 shall be published by the Registrar of Copyrights in the Official Gazette or in such other manner as he may deem fit.
Section 51 in the Copyright Act, 1957
51. When copyright infringed.—Copyright in a work shall be deemed to be infringed—
(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act—
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or
(iii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright.
(b) when any person—
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India,” any infringing copies of the work:
Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work, for the private and domestic use of the importer.
Explanation.—For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy”.
SECTION 27 OF TRADE MARKS ACT,1999
27. No action for infringement of unregistered trade mark.—
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
The High Court in this case observed that Dhiraj Dharamdas Dewani vs. M/s Sonal Info Systems Pvt. Ltd, at least implicitly, equates or places on the same pedestal registration under Trade Marks Act with registration under the Copyright Act. This is incorrect.
The two are entirely distinct. Registration under the Trade Marks Act confers specific distinct rights unavailable to an unregistered proprietor. Important amongst these is the right to sue for infringement. This is only available to a registered proprietor.
There is no such requirement under the Copyright Act at all. In fact the Copyright Act gives a range of rights and privileges to the first owner of copyright without requiring prior registration.
Section 45 of the Copyright Act, 1957 says that the author or publisher or owner or other person interested in copyright in any work “may” make an application in the prescribed form for entering the particulars of work in the register of copyright.
Section 51 of the Copyright Act, 1957 , which speaks of infringement of copyright, does not restrict itself to works that have been registered with the Registrar of Copyright.
Notably, the bar we find in Section 27 of the Trade Marks Act is conspicuous by its absence in the Copyright Act.
Section 27 of the Trade Marks Act,1999 says that no person is entitled to institute any proceeding in regard to infringement of an unregistered trade mark. This is the requirement of prior registration of a mark to be able to maintain a suit for infringement. This is to be distinguished from the common law action in passing off available even to an unregistered proprietor of a trade mark.
CONCLUSION: from above decision it is clear that for bringing suit for infringement of copyrights it is not necessary that subject matter should be registered with Registrar of Copyrights. But in case of infringement of a trade mark, the registration of trade mark is necessary for bringing any suit for infringement.
DISCLAIMER the above write up is only for information and knowledge of readers. The views expressed here are the personal views of the author and same should not be considered as professional advise. It is advisable to go through order copy of above cite case for more clarification and understanding.