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2 | Case Identifier | Plaintiff | Defendant | Copyright Number(s) | Court | Technology Field | Cause of Action | Key Dates | Outcome | Notes | Links | |||||||||||||||
3 | 1 | Triloki Nath Gupta vs. Durga Prasad Gupta MANU/CP/0003/2004 | Triloki Nath Gupta | Durga Prasad Gupta | No. A-49734/89 | Copyright Board at New Delhi | Ayurvedic hair oil | Regarding an application under Section 50 of the Copyright Act, 1957, seeking the expunction of copyright entry No. A-49734/89. The applicant argued the registration was obtained via false statements and misleading claims. | 1989: The copyright registration made. September 20, 2002: The respondent filed his written statement after a two-year delay. June 9, 2004: The Copyright Board delivered the final judgment | The Copyright Board ordered the expunction of the copyright entry from the Register on the basis of false claims, non-compliance with Section 45, and failure of notice, and violating Rule 16(3) as respondent lied about interest existing for the manufacturers of "Rogan Kalyan Tel", invented by the Respondent's father. | Applicant must send a notice to every person who has an interest in the copyright suit as Rule 16 is mandatory in nature | https://indiankanoon.org/doc/455722/#:~:text=The%20respondent%20Shri%20Durga%20Prasad,that%20oil%20and%20the%20name | ||||||||||||||
4 | 2 | Sakthi Kulangara Match Workers Industrial Co-operative Society Ltd. vs. Arason Match Industries MANU/CP/0001/2006 | Sakthi Kulangara Match Workers Industrial Co-operative Society Ltd. | Arason Match Industries | No. A-66314/2004 | Copyright Board at New Delhi | Safety matches | Petitioners were using word marks "WE THREE" and "WE FOUR", received a legal notice from respondents for carrying similar label as they alleged to be registered owners, petitioners moved an application for expunction under section 50 of Copyright Act. | October 29, 1954: Date of the trademark application for the respondent’s predecessor in interest. June 20, 2001: Respondent sent a legal notice to the petitioner alleging trademark infringement. March 14, 2006: The Kerala High Court directed the Copyright Board to expedite the petition for expunction. July 25, 2006: Final decision by the Copyright Board. | Copyright Board allowed the petition and for the entry to be expunged. | Applicant per section 45(1) is required to send notice to his rival in trade that no identical or deceptively similar artwork has been registered under the Act. Rule 16(3) has a mandatory nature. | https://indiankanoon.org/doc/176908/ | ||||||||||||||
5 | 3 | Music Broadcast Pvt Ltd and Ors vs. Phonographic Performance Ltd MANU/CP/0005/2002 | Music Broadcast Pvt Ltd and Ors | Phonographic Performance Ltd | Copyright Board at Hyderabad | Radio Broadcasting Stations License with respect to sound recording | Petitioner aggrieved by the royalty demanded by the defendant, hence approached Copyright Board under Section 31(1)(b). | 21 June, 2001- Plaintiff's Application for Compulsory License to the Copyright Board; 27 June, 2001-Applicant moved the Hon'ble Bombay High Court; 28 June, 2001- Interim order passed directing the defendants to grant licence in favour of the plaintiff; 2 July, 2001- Learned Judge pronounced a clarification that while deciding the matter the Copyright Board will decide on the basis of the material produced before it by the parties; 19th November, 2002- decided | Registrar of Copyright was directed by the Board to grant compulsory licenses to complainants at standard royalty rate, normal hours, Rs. 20 lakhs security deposite. This order was valid for 2 years post which the Board was to hear the parties between September 1, 2004-October 31, 2004, using actual audited accounts. | The Board refused to distinguish between creator rights and entrepreneur rights as this dichotomy is absent in the Copyright Act; Board decided factors for determination of compensation in this case such as audience size, number of radio stations, paying capacity of radio stations, cost acquisition by PPL, etc. | https://indiankanoon.org/doc/1242789/ | |||||||||||||||
6 | 4 | Jay Engineering Works Ltd. vs. Chinar Trust and Ors. 2005(31)PTC639(CB) | Jay Engineering Works Ltd | Chinar Trust and Ors. | No. A-49316/88 No. A-25166/79 No. A-5349/70 | Copyright Board at New Delhi | Petal device | Applicant made application under Section 50 of Copyright Act seeking expunction of artistic work "Usha Shriram", alleging it lacks originality, suppression of material facts, and infringement Copyright Act and Rules. | December 10, 1979: The Delhi High Court ruled in favor of a third party, Swaran Singh, regarding the "Usha" trademark; August 7, 1984: Respondent No. 1 filed the application for the impugned copyright registration. | Application was dimissed and Respondent was held to be an honest concurrent user of USHA. | When work is created Copyright is born and vested in author under Copyright Act, thus registration is prima facie evidence not mandatory; Section 45 before amendment was applicable and does not have restrospective effect along with Rule 16(3) as of 1984. | https://indiankanoon.org/doc/1647220/ | ||||||||||||||
7 | 5 | Hindustan Pencil Pvt. Ltd. vs. Universal Trading Company MANU/CP/001/1999 | Hindustan Pencil Pvt. Ltd. | Universal Trading Company | Respondents- Nos. A 30813/80 and A 35887/82; Petitioners- A 25427/1979 | Copyright Board at New Delhi | Stationery- pencils | Petitioners filed application under Section 50 of Copyright Act for expunction of Respondent's copyrighted works from office of Registrar of Copyrights, by making false statements and false declarations on ownership, proprietorship, and authorship. | October 17, 1979-petitioners' artistic work (A 25427/79) was registered; February 27, 1999-Copyright Board delivered the final order | Petition was allowed and entries by the Respondants be expunged from the Registrar of Copyrights and Respondants to pay Rs. 10,000 as compensation. | Relied on several judgements to lay down tests for comparing genuine and infringing marks such as- deciding on first impression if marks are likely to cause confusion, from the point of view of a man with average intelligence, overall visual and phonetic similarity and who are the persons likely to be deceived. | https://www.casemine.com/judgement/in/5a6576954a9326024ad89522# | ||||||||||||||
8 | 6 | Societe des Produits Nestle, S.A. vs. Kitkat Food Products 2006(33)PTC548(CB) | Societe des Produits Nestle | Kitkat Food Products | No. A-52555/94 | Copyright Board at New Delhi | Chocolate bar | Petitioner filed an application under section 50 of Copyright Act for expunging the Respondent's entries in the Register of Copyright on the grounds that it was entered wrongfully. | March 29, 1994: Date of the respondent’s impugned copyright registration; November 14, 2003: The Copyright Board issued its first notice to the respondent; July 25, 2006: Copyright Board delivered the final judgment | Copyright Board allowed for the Respondent's entries to to be expunged. | If the theme of the work is similar but presented differently there is no copyright, however, the surest way to determine is if the reader or viewer after having read or viewed the work is clearly of the opinion that it is an unmistakable copy of the original | https://indiankanoon.org/doc/1824835/ | ||||||||||||||
9 | 7 | Mars Incorporated vs. Monica Galaxy Pvt. Ltd. MANU/CP/0015/2008 | Mars Incorporated | Monica Galaxy Pvt. Ltd. | No. A-58186/00 | Copyright Board at New Delhi | Confectionary and Frozen Foods | Application was made under section 50 for expunction of respondent's registration alleging that the respondent has obtained this registration in violation of section 45 of the Copyright Act. | October 27, 1998-interlocutory application filed by petitioner against the respondent at civil court; February 15, 2000-Registrar of Trade Marks issued the clearance certificate to respondent; January 3, 2001-respondent obtained impugned copyright registration; July 4, 2008-Copyright Board delivered final decision | Copyright board directed Registrar to expunge respondent's registration from the Register. | Regstrar of Trade Marks does not override the requirements of teh Registrar of Copyright in checking compliance with Copyright standards | https://d2.manupatra.in/ShowPDF.asp?flname=Mars_Incorporated_vs_Monica_Galaxy_Pvt_Ltd_0407200CP200811021521171663COM348348.pdf | ||||||||||||||
10 | 8 | Devico (India) Iron Foundry and Engineering Works vs. Iqbal Singh MANU/CP/1010/2007 | Devico (India) Iron Foundry and Engineering Works | Iqbal Singh | No. A-61170/2002 | Copyright Board at Mumbai | Agricultural Machinery | Aapplication under Section 50 of the Copyright Act to expunge the respondent's copyright registration due to deceptive similarity, invalid trademark certificate, and questionable assignment | November 25, 1954-registered the trademark "Badal Toka"; January 2001-Respondent obtained NOC from the Registrar of Trade Marks; July 16, 2001-Petitioner filed a trademark rectification application against the respondent; September 19, 2007-Final order delivered by the Copyright Board | The Copyright Board dismissed the application for rectification, finding no merit in the petitioner's claims. | The Board ruled that it cannot call into question the appropriateness of a certificate issued by the Registrar of Trade Marks under Section 45 of the Copyright Act. Any grievance against such a certificate must be addressed to the Intellectual Property Appellate Board (IPAB) or the appropriate High Court. For rectification of an artistic work, the Board is strictly concerned with the visual and artistic elements of the registered work (such as shapes and scripts) rather than general trade disputes. | https://d2.manupatra.in/ShowPDF.asp?flname=Devico_India_Iron_Foundry_and_Engineering_Works_vsCP20071102152121492COM278782.pdf | ||||||||||||||
11 | 9 | Urmila Charan Gupta vs. Charushilla Sharan Gupta and ors MANU/CP/0001/1982 | Urmila Charan Gupta | Charushilla Sharan Gupta | Copyright Board at New Delhi | Publishing and Literary Works | Application filed under Section 50 of the Copyright Act, 1957, seeking the expunction of entries in the Register of Copyrights for wrongful entry, disputed ownership, and licensing claims | June 12, 1965-Petitioner served notice to respondents claiming exclusive copyright; November 22, 1965-petitioner filed the original application; June 12, 1970-Copyright Board initially decided in favor of the petitioner; August 31, 1978-SC set aside the earlier orders and remitted the matter back to the Board for disposal according to law; June 1, 1982-Board delivered the final decision after nearly 17 years of litigation. | Copyright Board ruled ordered the expunction of the names of the respondents and Shri Sia Ram Sharan Gupta from the Register of Copyrights for the 38 books. entry was already corrected after the Order of the Board dated 12-6-70, therefore no further action needed. | Under Section 19, no assignment of copyright is valid unless it is in writing and signed by the author or an authorized agent. Rights cannot be assigned through mere oral agreements or inferred from family relationships; The Board confirmed it has the procedural power to dispose of disputes involving multiple books (in this case, 38) under a single application if the parties and causes of action are the same. | https://d2.manupatra.in/ShowPDF.asp?flname=Urmila_Charan_Gupta_vs_Charushila_Sharan_Gupta_andCP19820505152228022COM269764.pdf | |||||||||||||||
12 | 10 | Kwality Ice Cream Pvt. Ltd. vs. India Hobby Centre (P) Ltd. 1984 SCC ONLINE CAL 208 | Kwality Ice Cream Pvt. Ltd. | India Hobby Centre (P) Ltd. | No. A-30184/80 | Calcutta High Court | Ice creams | Petitioner filed a suit for a permanent injunction restraining the defendants from infringing the petitioner's copyright and restraining them from passing on or selling or advertising or trading any icecream and/or similar products under the label 'Sub-Zero' | November 18, 1980- Kwality obtained copyright registration for the "SUB ZERO" label; August 26, 1992: Final decision by the Copyright Board. | The Copyright Board allowed the petition and ordered the expunction of entry No. A-41775/83 from the Register of Copyrights. | Plaintiff does not need to establish a question of the user of an identical name, but show that the two names are so deceptively similar that there is a likelihood of confusion amongst the persons dealing with the two companies”. | https://www.casemine.com/judgement/in/56ea8595607dba36fd0b81e6 | ||||||||||||||
13 | 11 | Jindal (India) Private Ltd. vs. Diamond Plastic Products MANU/CP/0001/1993 | Jindal (India) Private Ltd. | Diamond Plastic Products | No. A-32546/81 | Copyright Board at New Delhi | Industrial Manufacturing (Pipes) | Petitioner under section 50 of the copyright act for rectification of ROC A-32546/1981 alleging that the respondent had dishonestly and wrongfully registered the artistic work. | September 15, 1959-petitioner's first trademark registration for "JINDAL" and second on March 2, 1963; June 29, 1993- Copyright Board delivered its final order | Petition was dismissed and petitioner was not entitled to relief of expunging the impugned entry from the register of copyrights as it was held to not be wrongfully entered | Under the Copyright Act that there can be no copyright in a word or words but the right can only be in the artistic manner in which the same is written; the mere use of word “Jindal” by the respondent in his label cannot by any test constitute the infringement of the copyright of the artistic works of the petitioner. | https://www.casemine.com/judgement/in/5a6576814a9326024ad805a8 | ||||||||||||||
14 | 12 | Hindustan Sanitaryware and Industries Limited vs. Champion Ceramic MANU/CP/0016/2007 | Hindustan Sanitaryware and Industries Limited | Champion Ceramic | No. A-58561/2001 | Copyright Board at New Delhi | Sanitary Ware and Bath Fittings | Application filed under section 50 of the copyright act seeking expunction of respondent's entry of the artistic work "Himware" by alleging that the label is not original in character and the respondent is not the author of the said trademark, and being dishonest and concealing facts. | May 16, 1990-trademark registration for "H-VITREOUS HINDWARE"; March 3, 2004-applications filed to register "HINDWARE"; January 31, 2007: The Copyright Board delivered the final order | Application dimissed for rectification as copyright board held the impugned work to be original artistic work | There can be no copyright on a word but right can only exist in an artistic manner; ocular features of an artistic work do not support of it being original | https://d2.manupatra.in/ShowPDF.asp?flname=Hindustan_Sanitaryware_and_Industries_Limited_vs_CCP200706051523153825COM209140.pdf | ||||||||||||||
15 | 13 | Vaidya Nandram Gigraj Chamaria vs. Raj Kumar Saraf MANU/CP/0013/2007 | Vaidya Nandram Gigraj Chamaria | Raj Kumar Saraf | No. A-66496/2004 | Copyright Board at New Delhi | Ayurvedic Medicine and Pansarat | Application under section 50 filed for expunction of respondent's entry obtained malafidely, and it does not bear any date of its issuing or creation | March 27, 1996- Petitioner applied for trade mark registrations; July 28, 2003- Respondent applied for the contested copyright registration; February 26, 2004- Registrar issued the registration certificate A-66496/2004 to the respondent; September 19, 2007- Final decision date" | Copyright Board directs the register of copyright to expunge the respondent's entry | Burden of proof is on the applicant to present necessary evidence in support of the facts stated while getting registration | https://d2.manupatra.in/ShowPDF.asp?flname=Vaidya_Nandram_Gigraj_Chamaria_vs_Raj_Kumar_Saraf_CP20071102152121505COM284096.pdf | ||||||||||||||
16 | 14 | UC Jindal vs. Galgotia Publication Pvt. Ltd. MANU/CP/0017/2008 | UC Jindal | Galgotia Publication Pvt. Ltd. | Copyright Board at New Delhi | Academic Publishing / Mechanical Engineering: | Complaint under section 19A of the copyright act; respondent has published the books authored by the petitioner; respondent has fraudulently ripped chapters before publishing and allegedly violated principle of reciprocity | April 9, 2007-petitioner's final letter withdrawing permission for the four books without written agreements; September 21, 2008-final order by the Copyright Board | Petition is dismissed with no costs | Copyright Board does not have the jurisdiction to provide remedy for breach of moral rights under section 57(1)(b), as it is a quasi-judicial forum with limited jurisdiction | https://d2.manupatra.in/ShowPDF.asp?flname=UC_Jindal__vs__Galgotia_Publication_Pvt_Ltd_210920CP2008090115231745146COM353571.pdf | |||||||||||||||
17 | 15 | Mohd. Naseer vs. Iqbal Hussain MANU/CP/0006/2008 | Mohd. Naseer | Iqbal Hussain | No. A-57793/99 | Copyright Board at Bangalore | FMCG / Tea Industry | Complaint filed under section 50 of copyright act by the petitioner claiming that there is no infringement on their part as the respondent's mark, "Ispahani Tea" is different from the petitioner and hence, they be allowed to use their mark | October 9, 2000-respondent's artistic work was registered; December 28, 2001- Section 50 petition; March 16, 2006-petitioner obtained copyright registration (No. A-76011/2006) for the "Family Tea" label; January 15, 2008: The Copyright Board delivered the final order | Petition was dismissed as there was nothing on record to show that the work lacked originality; both the works stand to be distinct | Claiming a work to be common and for the general public to use is not enough to conclude that the work is not original | https://d2.manupatra.in/ShowPDF.asp?flname=Mohd_Naseer__vs_Iqbal_Hussain__15012008__CopyrightCP200811021521171449COM479191.pdf | ||||||||||||||
18 | 16 | Bengal Lamps Ltd. vs. Prestige Lights Ltd. MANU/CP/0007/2008 | Bengal Lamps Ltd. | Prestige Lights Ltd. | No. A-76067/2006 | Copyright Board at Kolkata | Electrical/Lighting Industry | This is an application under section 50 of the Copyright Act, 1957 for expunction of Registration number A-76067/2006 . | October 4, 2006-notarization for the petitioner's affidavit; April 11, 2008-Copyright Board delivered the final order. | Petition was dismissed for being defective and petitioners were asked to file afresh | No new precedent set | https://d2.manupatra.in/ShowPDF.asp?flname=Bengal_Lamps_Ltd_vs_Prestige_Lights_Ltd_11042008__CP200811021521171450COM64208.pdf | ||||||||||||||
19 | 17 | Pune Video Theaters Association vs. Cinemaster MANU/CP/0001/2001 | Pune Video Theaters Association | Cinemaster | Copyright Board at New Delhi | Cinematography / Home Video | Petitioner filed a complaint under section 31 of the copyright act and seeking relief from exorbitant license fee being charged by the respondents and refusal to grant license hence the work being withheld from public | August 29, 2001-Copyright Board delivered its final order | Complaint dismissed by the Copyright Board with costs as the prerequisites for applying section 31 were missing from this case | The Board does not have the jurisdiction to fix license fee without having the grounds to invoke section 31 | https://indiankanoon.org/doc/917116/ | |||||||||||||||
20 | 18 | Hindustan Pencils Ltd. vs. Alpna Cottage Industries and Ors. MANU/CP/0002/2001 | Hindustan Pencils Ltd. | Alpna Cottage Industries and Ors. | Nos. A-16117/76 and A-20335/78 | Copyright Board at Panji-Goa | Stationery and Office Supplies | Application under section 50 for expunction of copyrights held by the respondents alleging that the respondent's work is identical to theirs, further that respondent's have made false statements and false declaration of ownership | January 3, 2001-Copyright Board delivered the final order. | Petition was allowed and respondents were directed to pay Rs 10,000 to the petitioners | Copyright Board held that the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy." | https://d2.manupatra.in/ShowPDF.asp?flname=Hindustan_Pencils_Ltd_vs_Alpna_Cottage_Industries_CP20010205151909109COM650738.pdf | ||||||||||||||
21 | 19 | Bata India Limited vs. Khadim Holdings Pvt. Ltd. MANU/CP/0009/2008 | Bata India Limited | Khadim Holdings Pvt. Ltd. | Copyright Board at Kolkata | Footwear (Rubber Slippers) | Petitioner filed application under section 50 of Copyright Act seeking expunction of 5 copyright registrations of the respondent on account of violation of rule 16(3) and violation of petitioner's prior trademark rights | June 29, 1998-Respondent filed for the cancellation of Bata's trademarks in the HC; August 7, 2002-Petitioner was served a copy of the respondent's written statement in the civil suit; April 11, 2008-Copyright Board delivered the final order | Application was allowed and Registrar was directed to expunge defendant's entries | Duty to notify interested person is a statutory requirement under rule 16(3), even if the applicant believes that the rival may not have interest in the trademark | https://d2.manupatra.in/ShowPDF.asp?flname=Bata_India_Limited_vs_Khadim_Holdings_Pvt_Ltd_1104CP200811021521171553COM914201.pdf | |||||||||||||||
22 | 20 | Hindustan Lever Limited vs. Biswanath Hosiery 2002 SCC ONLINE CB 2 | Hindustan Lever Limited | Biswanath Hosiery | No. A-8141/72 | Copyright Board at New Delhi | FMCG and Textiles | Application filed under section 50 of copyright act to expunge defendant's registration on account of the defendant having obtained the same fraudulently, and motivated by causing confusion between their product and petitioner's product in the consumers' mind | April 1, 1931-LUX trademark and artistic logo were registered with the Calcutta Registrar; 1972-respondent obtained copyright registration (No. A-8141/72) for their version of the LUX logo; January 28, 2002-Copyright Board delivered the final judgment | Petition was allowed and defendant's registration was expunged as it was proved that there were material similarities between petitioner's and defendant's registrations | The petitioner’s extensive advertising, sales, and reputation supported the mark’s goodwill which made a strong case in favour of petitioner | https://www.casemine.com/judgement/in/5a6576624a9326024ad70df4 | ||||||||||||||
23 | 21 | Aurio Pharma Laboratories Pvt. vs. Prem Pathak MANU/CP/0011/2008 | Aurio Pharma Laboratories Pvt. | Prem Pathak | No. A-75262/2005 | Copyright Board at Kolkata | Pharmaceuticals / Medicine | Application to expunge respondent's copyright registration on account of respondent's label title being similar to the petitioner's, fraudulent registration, and violation of mandatory notice under rule 16(3) | September 19, 2005-Petitioner sent a cease-and-desist notice to the respondent after discovering the product in shops; December 22, 2005-Registrar issued the copyright registration certificate to the respondent; August 2, 2006-Calcutta HC passed an ad interim order against the respondent; April 11, 2008-Copyright Board delivered the final order. | Petition was allowed and respondent's registration was directed to be expunged on account of grounds of proving violation of rule 16(3) and similarity of the petitioner's and respondent's marks being proved | Copyright Board clarified that when a party is served a cease-and-desist notice or is involved in the trademark dispute of the concerned mark, that person is legally considered as an interested person who needs to be served a notice under rule 16(3) | https://d2.manupatra.in/ShowPDF.asp?flname=Aurio_Pharma_Laboratories_Pvt_vs_Prem_Pathak_11042CP200811021521171556COM208077.pdf | ||||||||||||||
24 | 22 | Federation of Industries of India vs. G. Kesavalu Naidu | Federation of Industries of India | G. Kesavalu Naidu | Nos. A-65629/2003 and A-65630/2003 | Delhi High Court | Mechanical Engineering / Manufacturing | Application filed under section 50 of copyright act seeking expunction of respondent's copyright registrations for artistic drawings of steel tubes and failure to comply with requirements under rule 16(3) and certificate requirement under section 45(1) | December 9, 2003-Registrar of Copyrights issued the contested registration certificates; August 18, 2005- Bureau of Indian Standards confirming mandatory certification for steel tubes used for water wells; March 24, 2008-final hearing before the Copyright Board; July 4, 2008-Copyright Board delivered the final order. | Application was allowed and Registrar was directed to expunge the respondent's two copyright entries as it was proved that respondent's marks were deceptively similar to that of petitioner's | It was clarified by the Copyright Board that protection for simple shapes or mechanical devices can be sought under Patent or Design as opposed to copyright law as the criteria for protection differs in the two and the former is more suited for measuring instruments | https://indiankanoon.org/doc/30278382/ | ||||||||||||||
25 | 23 | Bharati Dutta vs. Saradindu Basu MANU/CP/0010/2008 | Bharati Dutta | Saradindu Basu | Copyright Board at Kolkata | Publishing / Literary Works | Petitioner filed complaint under section 19A(2) of copyright act as she claimed that her father assigned her copyrights of specific books, the royalties and rights for which belong to her after her father's death, which is contested by the respondent's who happen to be her siblings | June 5, 1997-publisher (Prentice Hall) paid the balance of royalties to the complainant; September 8, 1997-publisher paid an advance towards royalty to the complainant; April 11, 2008-Copyright Board delivered the final order | Copyright Board ruled that the assignments were in favor of the petitioner under section 19 of copyright act and that the petitioner was entitled to royalties for a five-year period following each assignment's execution date till May 2002 | The Copyright Board clarified that copyright assignment can be made to be operative after the death of the assignor, as this is a specific provision in the copyright act and can override the general law regarding wills; assignments under section 18 of copyright act are exempt from stamp duty in West Bengal | https://d2.manupatra.in/ShowPDF.asp?flname=Bharati_Dutta_vs_Saradindu_Basu_11042008__CopyrighCP200817031520071521COM153405.pdf | |||||||||||||||
26 | 24 | Marico Ltd. vs. Jagjit Kaur 2018 SCC ONLINE DEL 8488 | Marico Ltd. | Jagjit Kaur | No. A-64850/2003 | Delhi High Court | FMCG / Personal Care | Petition filed under section 50 of copyrigh act seeking expunction of respondent's entry alleging that respondent's artistic work NIAL UTTAM is deceptively similar to that of petitioner's mark NIHAR and violation of rule 16(3) by respondent | September 10, 1997-Execution of a tripartite deed of assignment for the "NIHAR" artistic work; July 25, 2003-Registrar of Copyrights granted registration No. A-64850/2003 to the respondent; February 2004-petitioner discovered the respondent was deceptively selling similar pouches; September 21, 2008-Copyright Board delivered the final order | Petition was dismissed as the Board concluded there was no violation of rule 16(3) as it was not proved that respondent was aware of petitioner's specific interest in the subject matter at the time of respondent's application therefore no legal liability to give notice; and that there was lack of evidence that the respondent's artistic label and petitioner's label were deceptively similar | Copyright Board relied on linguistic origins of the two words in the artistic work and concluded that they had distinct meanings; Board state that it does not have jurisdiction over the matter as appeals regarding the Registrar of Trade Marks find jurisdiction with the Intellectual Property Appellate Board (IPAB) | https://www.casemine.com/judgement/in/5ada15d19eff43635aab5258/amp | ||||||||||||||
27 | 25 | Raj Kumar Sharaf vs. Visakha Chemicals | Raj Kumar Sharaf | Visakha Chemicals | Nos. A-75765/2006 and A-66417/2004 | Delhi High Court | ayuvedic churan tablets | Two applications filed by petitioners for expunction of respondent's registrations on account of the registrations made fradulently and by the respondent suppressing material facts and violation of rule 16(3) | 25 January 1988-Petitioner’s Trade Mark Registration for "ROCHAK" became effective; 6 October 2003-Respondent filed a civil suit against the petitioner in District Court, proving knowledge of the dispute; 10 January 2006-Respondent applied for copyright registration; 21 January 2009-Copyright Board delivered the final judgment | Petitions were allowed and Registrar of Copyrights was directed to expunge the respondent's entries as it was proved that there were discrepancies by the respondent as their certificate for the work read "AM PACHAK" and actual artistic work contained "AM PACHAK" which was the petitioner's mark which indicated intent to copy and deceive | Board clarified that though the Registrar of Trade Marks issued clearance certificate u/s 45, Registrar of Copyright still has the duty to evaluate the application and must verify it independently. | https://www.casemine.com/judgement/in/5e6e18519fca19104525e56b | ||||||||||||||
28 | 26 | Vandana vs. Vandana Saree Emporium MANU/CP/0001/1976 | Vandana | Vandana Saree Emporium | Nos. A-10031/73 and A-10032/73 | Copyright Board at Culcatta | Fashion and Textiles (Saree Business) | Application for expunction of two entries from the Register of Copyrights on account of the petitioner having prior ownership over the word "Vandana" and fraudulent claim of authorship over the said mark by respondent | January 5, 1972-Initial joint application for copyright registration; July 27, 1972-applicant successfully registered the works under Nos. A-8031/72 and A-8032/72; 1973-respondent registered the same works as "original," leading to the present litigation; July 2, 1976-Final decision by the Copyright Board | Applications were allowed and Board directed for the respondent's entries to be expunged and for the respondent to pay Rs. 1,000 for raising frivolous and contradictory pleas | The board emphasised on a broad definition of person aggreived and that is is not limited to merely owners or licensees but to anyone affected by a wrongful entry in the Register | https://d2.manupatra.in/ShowPDF.asp?flname=Vandana_vs_Vandana_Saree_Emporium_02071976__CopyriCP19760505152228021COM145965.pdf | ||||||||||||||
29 | 27 | Accurate Transheat Pvt. Ltd. vs. Devendra Somabhai Naik MANU/CP/0001/2004 | Accurate Transheat Pvt. Ltd | Devendra Somabhai Naik | No. A-51910/92 | Copyright Board at New Delhi | Industrial Machinery / Mechanical Engineering | Application for expunction of defendant's registration u/s 15(2) of copyright act that states that copyright in a design capable of being registered under Designs Act ceases once the work has been industrially reproduced more than 50 times and therefore the copyright had legally ceased to exist | November 17, 1992-artistic work was registered under No. A-51910/92; September 7, 2001-Copyright Board heard arguments on limitation; July 5, 2002-Gujarat HC confirmed the Board's order regarding the non-applicability of the Limitation Act to Section 50; January 22, 2004-Board ordered parties to submit written arguments due to extensive delays in oral hearings; June 4, 2004-Date of the final judgment | Application was allowed and board directed the defendant's registration to be expunged as they held that the copyright had ceased to exist | Board clarified that "applied" u/s 15(2) meant use of model, pattern, or blueprint to create an article in a specific shape or form | https://indiankanoon.org/doc/1431132/#:~:text=The%20main%20plank%20for%20seeking,been%20reproduced%20more%20than%20fifty | ||||||||||||||
30 | 28 | R.P. Mittal vs. Basant Industries MANU/CP/0002/2004 | R.P. Mittal | Basant Industries | Copyright Board at New Delhi | Mechanical Engineering/Agricultural Equipment | Application filed u/s 50 of copyright act for expunction of respondent's resgistration as the applicant claims to be the owner of the logo in question and that respondent made a fradulant registration and violating rule 16 of mandatory notice | January 4, 1972-Evidence showed the logo was used on documents noted by a Labour Inspector; May 1980-Applicant’s claimed date of commissioning the artist Safdar Hashmi; December 27, 1998-Respondent published a caution notice claiming ownership of the work; June 14, 2004-Copyright Board’s final judgment. | Board dismissed application as respondent could prove prior use of the logo in question and that the applicant ceased to have rights upon retirement therefore there was no fraud on part of the respondent | Since, the board ruled the applicant to be a retired party, it clarified that once a party retires and transfers their interest it no longer remains an interested party for consideration of rule 16 of Copyright Rules and to be given compulsory notice | https://indiankanoon.org/doc/1414161/#:~:text=Thus%2C%20there%20are%20six%20cases,Dissolution%20on%2010th%20January%201980. | |||||||||||||||
31 | 29 | Prestige Houseware (India) Ltd. and Ors. vs. Prestige Estate and Properties 2002(6)KARLJ232 | Prestige Houseware (India) Ltd. | Prestige Estate and Properties | No. A-51400 | Karnataka High Court | Kitchenware | Petition for expunction of copyright registration held by respondent for artistic work "PRESTIGE" as they alleged that it was copied by the respondent who tried committing the act of passing off | February 25, 1992-Date of the Respondent's copyright registration; December 1, 1994-Respondent issued a warning notice in newspapers claiming ownership of the "PRESTIGE" mark; May 1, 1995-second Petitioners registered several of their own artistic works as copyrights; July 2, 1999-Copyright Board's final order | Petition was dismissed and board directed the petitioners to pay Rs. 1,000 to the respondent as the respondent had proved prior use in their favour | Board highlighted the importance of registration and evidence of first publication in such cases to have the balance of convenience in your favour | https://indiankanoon.org/doc/978104/ | ||||||||||||||
32 | 30 | Abdul Rashid vs. M.R. Bidi Factory and Ors. MANU/CP/0004/2004 | Abdul Rashid | M.R. Bidi Factory and Ors | Copyright Board at New Delhi | FMCG / Tobacco Products | Application u/s 50 of copyright act for expunction of respondent's registration as applicant claimed to be owner of artistic work and that respondent was violating it by its slavish copy of the same, also violating mandatory notice requiremenr u/rule 16 | April 10, 1995-Date of user mentioned in the applicant's initial trademark application; 1996-applicant obtained an excise license to manufacture Bidis; December 19, 2003-matter adjourned due to the absence of counsel; May 14, 2004-Copyright Board delivered its final judgment. | Board dismissed application as the applicant failed to prove that they were aggrieved u/s 50 of copyright act and that the board found dissimilarities between the artistic works of applicant and defendant | Since, this case also involved trademark infringement the board reiterated its limited jurisdiction and that it cannot be a substitute of a Trademark Tribunal | https://d2.manupatra.in/ShowPDF.asp?flname=Abdul_Rashid__vs_MR_Bidi_Factory_and_Ors__14052004CP040004COM643436.pdf | |||||||||||||||
33 | 31 | Geminy Industrial Corpn. Pvt. Ltd. and Ors. vs. Rita Mechanical Works and Ors. MANU/CP/0005/1999 | Geminy Industrial Corpn. Pvt. Ltd. and Ors. | Rita Mechanical Works and Ors. | Copyright Board at New Delhi | Sewing Machines | Petition filed u/s 50 of copyright act for expunction of respondent's entry in the register of copyrights as the applicant argued that the respondent's artistic work was industrially reproduced more than 50 times and therefore ceased to have a copyright | 26 March 1996-Copyright Board ordered the consolidation of cases; 15 October 1998: A related petition was dismissed as withdrawn; 05 March 1999-Copyright Board delivered the final order. | Petitions were dismissed and board imposed Rs. 1.000 cost on applicants to be paid to respondent | The board held that merely pasting a label onto a machine does not constitute design because it does not alter its shape or pattern visible to the naked eye | https://d2.manupatra.in/ShowPDF.asp?flname=Geminy_Industrial_Corpn_Pvt_Ltd_and_Ors_vs_Rita_MeCP199905051521424011COM25857.pdf | |||||||||||||||
34 | 32 | Jaininder Jain vs. Kangaro Industries and Ors. MANU/CP/0002/2005 | Jaininder Jain | Kangaro Industries and Ors. | Copyright Board at New Delhi | stationery articles such as staplers | Application filed u/s 72(1) of copyright act against order of registrar of copyright which allowed respondent to register their artistic work which the appellant argued that the registration should not have taken place due to pending civil and trademark disputes | 28 October 1999- appellant filed objections against the registration; 10 November 1999-respondent applied for the registration of the artistic work; 28 February 2002-Registrar of Copyrights passed the reasoned order allowing the registration; 9 May 2002-appellant filed Appeal No. A 3/2003; 1 August 2005-Copyright Board delivered the final order dismissing the appeals. | Appeal was dismissed as the board did not find merit in the applicant's arguments | Board reiterated the nature of rule 16 of substance over form and that it's requirement is met even if formal notice was not served as long as interested party is given full hearing and is aware of the application | https://d2.manupatra.in/ShowPDF.asp?flname=Jaininder_Jain__vs_Kangaro_Industries_and_Ors__010CP050002COM833581.pdf | |||||||||||||||
35 | 33 | Kiran Jain vs. Kangaro Industries and Ors. 2006(32)PTC418(CB) | Kiran Jain | Kangaro Industries and Ors. | Copyright Board at New Delhi | stationery articles such as staplers | Application filed u/s 72(1) of copyright act against order of registrar of copyright which allowed registration of respondent's artistic work | 28 October 1999-appellant's husband filed objections to the registration; 30 November 1999-application for registration by Kangaro Industries was received by the Registry; 28 February 2002-Registrar of Copyrights passed the order allowing the registration; 1 August 2005-Copyright Board delivered the judgment dismissing the appeal. | Appeal was dismissed and applicant was directed to Rs. 5,000 to the respondents as the applicant failed to prove how they were aggrieved and what legal violation they suffered | Since the grounds of her appeal were identical to those of her husband (who had already filed his own appeal), and she had not objected earlier despite having the opportunity, she could not be considered a "person aggrieved" | https://indiankanoon.org/doc/428729/ | |||||||||||||||
36 | 34 | Seth Industrial Corporation vs. Bhoop Charan Singh MANU/CP/0001/1979 | Seth Industrial Corporation | Bhoop Charan Singh | No. A-11624/74 | Copyright Board at New Delhi | Rectification petition filed challenging respondent's copyright registration that allegedly infringed petitioner's mark and therefore requested a stay on copyright proceedings filed before assistant registrar of trade marks | 2 November 1974-date from which the petitioners' trademark "Neelam" was renewed for a period of seven years; 27 October 1979-Copyright Board delivered the final order | Petition was dismissed by board and applicants were ordered to pay Rs. 200 to respondent, board further refused to stay proceedings | The board reiterated its jurisdiction and that it has none over trademark violation matters and that the remedy for the same lies in civil courts or Registrar of Trademarks | https://d2.manupatra.in/ShowPDF.asp?flname=Seth_Industrial_Corporation_vs_Bhoop_Charan_Singh_CP197902051522120412COM903497.pdf | |||||||||||||||
37 | 35 | Harrington Construction and Finance Ltd. vs. Eicher Goodearth Ltd. MANU/CP/0001/1996 | Harrington Construction and Finance Ltd. | Eicher Goodearth Ltd. | No. A31658/81 | Copyright Board at Thiruvananthapuram | Petition u/s 50 of copyright act to expunge respondent's copyright entry alleging that their registered work "Horse Device" lacked originality and replicated the horse head which is a chess piece | 7 February 1981- date of the respondent's Copyright Registration (No. A31658/81); 19 December 1996-Copyright Board delivered the final order. | Board dismissed petition and ruled that respondent's registration was correct and that the petitioner was to pay costs of Rs. 1,000 to respondent for making a frivolous claim | Board clarified that though the 2D work of the respondent resembled the 3D chess piece, both belong to different mediums and the originality of expression over the idea is what matters in copyright law | https://d2.manupatra.in/ShowPDF.asp?flname=Harrington_Construction_and_Finance_Ltd_vs_Eicher_CP19960205152009511COM529400.pdf | |||||||||||||||
38 | 36 | Aggarwal Candle Works vs. Sandeep Candles MANU/CP/0003/2006 | Aggarwal Candle Works | Sandeep Candles | Dy. No. 7/2006-CO/A | Copyright Board at New Delhi | Respondent filed objection on applicant's registration of artistic work "Kiran Bright Stand Candles" for being deceptively similar to their own mark "King Label" and that the applicant was malicious while obtaining NOC from Trademark office without notifying the respondent | 11 September 1986-Date of objector’s application for "King Label" trademark;19 December 2005-Objector issued a 'cease and desist' notice to the applicant; 2 January 2006: Applicant responded to the legal notice, denying its relevance; 3 January 2006-Applicant filed the Copyright Application (Dy. No. 7/2006-CO/A); 8 August 2006-Hearing held before the Registrar of Copyright;31 August 2006-Final Judgment delivered. | Board accepting the respondent's objection because they found that applicant's registered artistic work was made fradulantly because of suppression of facts by getting an NOC merely days before copyright application | Board clarified that if a party receives cease and desist notice then it qualifies as an interested party who must be disclosed in the copyright application | https://d2.manupatra.in/ShowPDF.asp?flname=Aggarwal_Candle_Works_vs_Sandeep_Candles_31082006_CP200629041519301434COM309800.pdf | |||||||||||||||
39 | 37 | Ganga Vishnu Raheja Trustee vs. Swami Satyanand Dharmath Trust 120(2005)DLT609 | Ganga Vishnu Raheja Trustee | Swami Satyanand Dharmath Trust | Nos. L-14172/94 to L-14182/94 | Delhi High Court | Religious books | 11 petitions were filed u/s 50 of copyright act for expunction of respondent's copyright registrations as the petitioners claimed fradulent registration by respondent and false claim of ownership | 5 August 1994- Respondent obtained the impugned copyright registrations for the 11 books;12 June 1999- Copyright Board delivered the final order. | • Dismissal: The petitions were dismissed by the majority decision of the Board. Board dismissed petitions • Reasoning: The Board held that the petitioner was not a "person aggrieved" under Section 50. Since the petitioner had no valid license or assignment to publish the books, their inability to publish (due to the registration) was merely the prevention of an illegal act (infringement). One cannot claim to be "aggrieved" by being stopped from committing an illegality,. • Costs: The petitioner was ordered to pay Rs. 500 per petition as costs to the Respondent. • Dissent: One member, S.S. Saraf, dissented, arguing that in religious/public interest matters, the Board should have exercised quasi-judicial powers to direct the Registrar to correct the register suo motu, as the petitioner represented the public interest in disseminating the Swamiji's message | • Definition of "Person Aggrieved" (Illegal Acts): The case established that to be a "person aggrieved" for rectification purposes, one must show that the registration limits their legal rights. If a party's only grievance is that the registration stops them from unauthorized (illegal) reproduction of a work, they have no standing. The Board noted: "The damage suffered by the Petitioner is not damage as a result of the prevention of the exercise of a legal right". • Adoption of Trademark Principles: Lacking specific Copyright Act precedents, the Board explicitly adopted the interpretation of "person aggrieved" from Trade Marks Act jurisprudence (specifically Powell's Trade Mark), requiring that the applicant must be in the same trade and legally hampered by the registration. • Public Interest vs. Private Rights: The majority recognized that copyright registration can serve a public interest purpose (preventing commercial exploitation of religious texts), validating the Respondent's motive to keep the books at subsidized costs as per the author's wishes. • Quasi-Judicial Powers (Minority View): The dissenting opinion introduced a notable argument (though not the ruling) that the Copyright Board, as a tribunal, possesses inherent powers to "mould relief" and direct the Registrar to rectify errors suo motu in the interest of justice, even if the petitioner technically lacks standing | https://indiankanoon.org/doc/690640/?type=print | ||||||||||||||
40 | 38 | Shree Sawaram Agarbatti Bhandar vs. Ghanshyam Perfumery and Co. MANU/CP/0009/2007 | Shree Sawaram Agarbatti Bhandar | Ghanshyam Perfumery and Co. | A-73121/2005 A-55314/98 | Copyright Board at Mumbai | Agarbattis | Present petition is under section 50(b) of the Copyright Act, 1957 for the expunction of an entry wrongly made, or remaining on the register. The petitioner alleged that the respondent's artistic work titled, "Big Sona" was a slavish copying of the petitioner's "SAFARI BIG Agarabatti" wrapper. The petitioner claimed the respondent's registration was obtained fraudulently through the suppression of facts, as the petitioner had been using the design since 1987 and held a prior registration from 1998. | February 7th, 2004- the petitioner sent a legal notice to the respondent to desist from using the offending labels June 24th, 2004- | The Copyright Board dismissed the petition on a preliminary procedural ground The Board held that the Registrar of Copyrights is a necessary party in rectification proceedings because the Registrar is the custodian of the Register and must implement the Board’s decisions Since the petitioner failed to implead the Registrar, the petition was dismissed, though the petitioner was granted liberty to file a fresh petition correctly impleading the Registrar | • Requirement to Implead the Registrar: The Board clarified that even though the Copyright Rules are "sketchy" and do not explicitly mandate serving notice to the Registrar, general principles of law and analogies from the Trade Marks Rules and Civil Procedure Code dictate that the Registrar of Copyrights must be impleaded as a necessary party in Section 50 proceedings • Maintaining the "Purity of the Register": The Board emphasized that the Registrar has a duty to ensure registration provisions are rigorously followed and to maintain the "purity of the Register," which justifies their involvement in rectification disputes • Defining an "Aggrieved Person": The decision reinforced that a petitioner qualifies as an "aggrieved person" under Section 50 if they can demonstrate a direct interest in the work, such as having issued a legal notice for infringement that was met with a caveat from the opposing party • Filling Legislative Gaps: The ruling established that where Copyright Rules are silent on procedure, the Board can look to "analogous legislations" to ensure fair play and justice | https://d2.manupatra.in/ShowPDF.asp?flname=Shree_Sawaram_Agarbatti_Bhandar_vs_Ghanshyam_PerfuCP20071102152121491COM535776.pdf | ||||||||||||||
41 | 39 | Arora Associates vs. Surinder Prakash Gupta MANU/CP/0011/2007 | Arora Associates | Surinder Prakash Gupta | Copyright Board at New Delhi | cartoons | The appellant filed an appeal under Section 72 of the Copyright Act, 1957, against the order of the Registrar of Copyright dated 23 December 2005. The respondent filed applications to register copyright for six artistic works (cartoons). The appellant objected, arguing that these works were used in relation to goods (fabrics/towels) and therefore required a Search Certificate from the Trade Mark Registry under the Proviso to Section 45(1) of the Act. The Registrar had dismissed the appellant's objection on two grounds: 1. It was time-barred (filed after the 3-month period prescribed in Rule 16(4)). 2. The proviso to Section 45(1) did not apply because the respondent was not using the cartoons as a trademark, but merely printing them on goods | 17 February 2005-Respondent filed six applications (Title Nos. SAS-748 to SAS-753) for artistic works; 21 April 2005-appellant filed objections to the registration; 23 December 2005-Registrar of Copyrights passed the impugned order dismissing the objections and allowing registration; 31 January 2007-Copyright Board delivered the final order allowing the appeal | • Appeal Allowed: The Board set aside the Registrar's order. • Expunction: The entries made in the Register of Copyrights regarding the respondent's works were ordered to be expunged . • Costs: No order as to costs was made | • Literal Interpretation of Section 45(1) Proviso: The Board corrected the Registrar’s interpretation of the phrase "artistic work which is used or is capable of being used in relation to any goods." ◦ The Board held that this provision must be read literally. If an artistic work is used on goods (e.g., printed on fabrics), the applicant must provide a certificate from the Registrar of Trade Marks. ◦ It is incorrect to add the words "as a trade mark" to the statute. Even if the applicant claims they are not using the work as a trademark, if it is used "in relation to goods," the certificate is mandatory. • Time Limit for Objections (Rule 16): The Board clarified that the 3-month time limit for filing objections under Rule 16(4) applies only to persons who were served a specific notice under Rule 16(3). ◦ For third parties (like the appellant) who are not served notice, there is no strict time bar because there is no public notice provision for copyright applications. ◦ Such parties must file objections within a "reasonable period" after gaining knowledge of the application. • Statutory Rights vs. Duress: The Board ruled that an undertaking signed by a party under police custody/duress promising not to infringe does not stop them from exercising their statutory right to seek expunction of a copyright. Waiver of rights under duress does not eclipse statutory remedies | https://d2.manupatra.in/ShowPDF.asp?flname=Arora_Associates_vs_Surinder_Prakash_Gupta_3101200CP20071102152121493COM496681.pdf | |||||||||||||||
42 | 40 | Bombay Metal Works (P) Ltd. vs. Tara Singh 2006 SCC ONLINE BOM 1396 | Bombay Metal Works (P) Ltd. | Tara Singh | A-70858/2005 A-73955/2005 | Bombay High Court | Cycle parts | This is an application under Section 50 of the Copyright Act, 1957 (14 of 1957) for expunging the entries in the Register of Copyrights under A-70858/2005 and A-73955/2005 registered in favour of respondent No. 1 on the ground that these were entered wrongly in the Register. The grounds taken under the present petition by the petitioner for cancellation of the registration include that the copyright registrations have been obtained in disregard and violation of the provisions of section 45 of the Copyright Act, 1957 and the artistic work which is the subject matter of the impugned copyright registration is not an original work in terms of section 13(1) of the Copyright Act, 1957. Whether the artistic works under the impugned registrations are original artistic works in terms of section 13(2) of the Copyright Act, 1957 Whether there had been proper compliance of the requirement under rule 16(3) of the Copyright Rules, 1958 stipulating that the person applying for registration shall give notice of his application to every person who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it. | 12th February, 2002-High Court of Delhi issued an interim injunction via order 21st August, 1991-Proprietary right granted to petitioner in the Trade Mark registration nos. 556912 and 556915 | The petitioner has made further submission that it has filed civil writ petition in the Hon'ble High Court of Delhi being C.W.P. 1604 of 2004 seeking issuance of writ of certiorari quashing the search certificates issued by the Registrar of Trade Marks. The said petition is still pending in the High Court. Thus the petitioner is seeking remedy for the same cause from two different judicial fora. Determination of issue relating to the issuance of search certificates under section 45 of the Copyright Act, 1957 relates to the core of the issue in the instant dispute. Since the higher judicial forum whose determination in the matter shall be binding upon this Board is already seized of the matter, this Board is not competent to decide in so far as that issue is concerned. The issue involved is so vital and interwoven with the rest of issues that the rest of issues cannot be undertaken for scrutiny independent of the above matter. Therefore, the petition is non-maintainable. | https://www.casemine.com/judgement/in/5608fbafe4b014971114a5e1/amp | |||||||||||||||
43 | 41 | Enterntainment Network (India) Limited v. Super Cassette 2008 INSC 708 | Enterntainment Network (India) Limited | Super Cassette | Supreme Court | radio broadcasting | The core of the dispute involved the interpretation of Section 31 of the Copyright Act, 1957, specifically regarding compulsory licenses for broadcasting. The appellant, Entertainment Network (India) Ltd. (ENIL), which operates ""Radio Mirchi,"" sought to broadcast sound recordings owned by Super Cassette Industries Ltd. (SCIL), known for the ""T-Series"" brand. Differences arose when negotiations for a voluntary license failed because the parties could not agree on royalty rates and damages for past use. ENIL filed an application before the Copyright Board seeking a compulsory license, arguing that SCIL’s refusal to grant a license on reasonable terms warranted the Board’s intervention under Section 31(1)(b) of the Act | January 21st, 2002- SCIL issued a legal notice to ENIL regarding the infringement of its copyright; June 1st, 2002- SCIL issued a notice demanding Rs.1 crore for past infringement; January 28rd, 2003- ENIL filed case No. 10 of 2003 before the Copyright Board for the grant of a compulsory license against SCIL; October 20th, 2003- Copyright Board allowed the application for a compulsory license; June 30th, 2004- the Delhi High Court allowed SCIL's appeal, remitting the matter back to the Copyright Board for reconsideration; May 16ht, 2008- Supreme Court delivered its final judgement | The Supreme Court allowed the appeals and set aside the order of the Copyright Board. The Court remitted the matter back to the Copyright Board for fresh consideration on its merits. The Court criticized the Board's original procedure, noting it had refused to examine witnesses and held hearings on days originally scheduled for evidence production. The Court clarified that while the Board had the jurisdiction to entertain the application, it must examine the extent of infringement and whether the royalty terms demanded by the owner were truly unreasonable | Broad Interpretation of "Refusal": The Court held that "refusal" under Section 31 is not limited to an outright denial. If a copyright owner offers a license on unreasonable or arbitrary terms, it can be legally construed as a refusal, thereby triggering the Copyright Board's jurisdiction to grant a compulsory license. • Public Interest vs. Monopoly: The ruling emphasized that the Copyright Act is a "balancing statute". While it protects the owner's monopoly (a form of property right), that right is not absolute and must be balanced against the public interest in accessing creative works. • "Reading Down" Section 31(2): The Court resolved a potential absurdity in the Act by "reading down" Section 31(2). It determined that while the statute might appear to suggest a compulsory license can only be granted to one person, this restriction applies only to clause (a) (republication) and not to clause (b) (broadcast). Thus, multiple broadcasters can be granted compulsory licenses for the same work Application of International Conventions: The Court affirmed that International Conventions (such as the Berne and Rome Conventions) can be used to interpret domestic law and fill legislative gaps, provided they do not conflict with existing municipal laws. • Ground Realities and Technological Evolution: The judgment acknowledged that the interpretation of the Act must not remain static and should change according to "ground realities," such as the expansion of the FM radio industry | https://www.casemine.com/judgement/in/575fd364607dba63d7e6e519 | |||||||||||||||
44 | 42 | Eastern Book Company & Ors. v. D.B. Modak & Anr. 007 INSC 1266 | Eastern Book Company & Ors. | D.B. Modak & Anr. | Supreme Court | legal software/legal database like SCC Online | The appellants, who publish the law report Supreme Court Cases (SCC), claimed that the respondents infringed their copyright by creating CD-ROM software packages ("Grand Jurix" and "The Laws") that lifted the copy-edited text of Supreme Court judgments verbatim from SCC,. The appellants argued that while the raw judgments are from the public domain, their edited versions involve substantial skill, labor, and capital, including: • Standardization of text and paragraph numbering. • Preparation of headnotes, footnotes, and editorial notes,. • Verification and addition of cross-citations and case histories,,. • Formatting and style unique to SCC,. The respondents contended that judgments are "Government works" in the public domain under Section 52(1)(q)(iv) of the Copyright Act, and therefore, their reproduction is not an infringement | January 17, 2001- A single judge of the Delhi High Court dismissed the appellant's application for an interim injunction and vacated previous stay orders; March 9, 2001- the Division Bench of the Delhi High Court directed that respondents could sell their CD-ROMs provided they used their own headnote and did not copy SCC's text; December 12, 2011- Supreme Court's final judgement | The Supreme Court partly allowed the appeals, modifying the High Court's decision to provide additional protection to the appellants. The Court ruled as follows: • No Copyright in Raw Text: There is no copyright in the raw, original text of the judgments delivered by the Court, as they are in the public domain,. • Trivial Inputs Not Protected: Simple copy-editing inputs, such as correcting spellings, adding citations, or changing abbreviations (e.g., "Sec." to "Section"), were deemed trivial variations that do not meet the standard for copyright protection,. • Protected Elements: The Court granted protection to specific editorial contributions that required skill and judgment, including: Headnotes, footnotes, and editorial notes,. ◦ Segregating and numbering paragraphs, which requires an understanding of legal discourse,. ◦ Editorial labels for judicial opinions (e.g., identifying if a judge was "concurring," "dissenting," or "partly dissenting"),. • Restraint: The respondents were prohibited from copying these protected elements (headnotes, footnotes, paragraph numbering, and editorial stances) from SCC | 1. Shift from "Sweat of the Brow" to "Skill and Judgment": The Court rejected the traditional English "sweat of the brow" (or "industrious collection") doctrine, which rewarded labor alone. Instead, it adopted a middle-ground approach influenced by Canadian law (the CCH Canadian Ltd. case), requiring an exercise of skill and judgment that is not so trivial as to be a "mechanical exercise" 2. Requirement of Minimal Creativity: The Court established that while a work does not need to be "novel or non-obvious" (the patent standard), it must possess a minimal degree of creativity to qualify as "original" 3. Protection of Derivative Works: It clarified that for a derivative work to be protected, the author must produce something with a distinguishable feature or flavor that the raw material did not possess. 4. Public Interest vs. Author Rights: The judgment balanced the public's right to access judicial pronouncements in the public domain with the publisher's right to protect the value added through professional editorial expertise | https://www.casemine.com/judgement/in/5609ae60e4b0149711413a68 | |||||||||||||||
45 | 43 | Engineering Analysis Centre of Excellence Private Limited v. The Commissioner of Income Tax & Anr. 2021 INSC 137 | Engineering Analysis Centre of Excellence Private Limited | The Commissioner of Income Tax & Anr. | Supreme Court | computer software | The central dispute involved whether payments made by Indian residents to non-resident foreign suppliers for the use or resale of computer software constituted "royalty". Under Section 195 of the Income Tax Act, if such payments are royalties, they are taxable in India, and the Indian payer must deduct Tax at Source (TDS). The Revenue Department contended that the software license granted a "right to use" the copyright, making the payment a royalty under Section 9(1)(vi) of the Income Tax Act and various Double Taxation Avoidance Agreements (DTAAs). The assessees argued that they were merely purchasing a "copyrighted article" (goods) and not the "copyright" itself, meaning the payments should be treated as business profits (not taxable in India without a Permanent Establishment) rather than royalties | January 15, 2000- Effective date of the 1999 Amendment to the Copyright Act which modified section 14(b)(ii) regarding the sale of computer programs; October 15, 2011- the High Court of Karnataka ruled in favour of the Revenue in the Samsung Electronic case, holding that such payments were royalties; March 2, 2021- Supreme Court's final judgement | The Supreme Court allowed the appeals of the assessees and set aside the contrary judgments of the Karnataka High Court. The Court ruled: • Not Royalty: Payments for the resale or use of computer software through End-User License Agreements (EULAs) or distribution agreements are not "royalty" for the use of copyright. • DTAA Precedence: The definition of royalty in DTAAs (which is narrower) prevails over the domestic Income Tax Act when it is more beneficial to the assessee. • No TDS Liability: Since the payments were not royalties, Indian end-users and distributors were not liable to deduct TDS under Section 195. • Category Coverage: This ruling applied to all four categories of transactions, including direct sales to end-users, sales through Indian distributors, sales through foreign distributors, and software bundled with hardware | 1. Copyright vs. Copyrighted Article: The Court established a clear distinction between the transfer of a "copyright" (the exclusive right to reproduce or exploit a work) and the sale of a "copyrighted article". A non-exclusive, non-transferable license to use a program is the purchase of goods, not a transfer of copyright. 2. Statutory Recognition of the Exhaustion Principle: The Court clarified that the 1999 Amendment to Section 14(b)(ii) of the Copyright Act is a statutory recognition of the "doctrine of first sale" or "principle of exhaustion". Once a copy of a program is sold, the owner's distribution right for that specific copy is exhausted, and its further sale does not constitute an infringement or a transfer of copyright. 3. Nature of EULAs: The Court held that a standard EULA is not a license under Section 30 of the Copyright Act (which transfers an interest in the right) but is merely a set of restrictive conditions for the use of a product | https://www.casemine.com/judgement/in/603e82a4f282b7e88331bac0 | |||||||||||||||
46 | 44 | Indian Performing Right Society Ltd. v. Eastern Indian Motion 1977 INSC 87 | Indian Performing Right Society Ltd. | Eastern Indian Motion | Supreme Court | cinematograph film | The Indian Performing Right Society (IPRS), which represents composers and authors, published a tariff of fees and royalties it intended to collect for the public performance of musical works. Cinematograph film producers and exhibitors filed objections, arguing that the composers had been engaged under contracts of service or for valuable consideration to create music specifically for film soundtracks. The producers contended that they, as the authors of the films, were the first owners of the copyright in the entirety of the film, including the soundtrack, and therefore the composers had no rights left to assign to the IPRS. The central legal question was whether a composer retains a separate copyright in a musical work once it is incorporated into a film soundtrack at the instance of a producer | February 13, 1974-Calcutta HC judgment that ruled in favor of the film producers; March 14, 1977-SC judgment dismissing the IPRS appeal | The Supreme Court dismissed the appeal, upholding the High Court's decision that the producers held the primary rights. The ruling established: • Producer as First Owner: Under Section 17, Provisos (b) and (c), if a producer commissions a composer or lyricist for valuable consideration to create work for a film, the producer becomes the first owner of the copyright in that work unless a "contract to the contrary" exists. • Soundtrack as Part of Film: A "cinematograph film" includes its sound track; therefore, the owner of the film has the exclusive right to cause the sounds in that film to be heard in public. • No Further Permission Required: Once a composer authorizes the incorporation of their work into a film, the producer can exhibit the film (visual and acoustic portions) without seeking further permission from the composer. • Residual Rights: The composer retains the right to perform the music in public separately from the film (for profit), provided they have not assigned those rights away or been commissioned under Section 17 | 1. Harmonious Construction of Rights: The Court applied a "harmonious construction" to Sections 13 and 14, ruling that while a film is a separate entity with its own copyright, it does not completely extinguish the copyrights of the component parts (like music), though the producer's right to exhibit the film is paramount. 2. "Integral Yoga" of Copyright: Justice Krishna Iyer described the arrangement of rights in the Act as an "integral yoga," where the rights of the artist and the film producer can co-exist as "twin rights". 3. Strict Definition of "Musical Work": The Court clarified that in India, a "musical work" must be notationally written, printed, or graphically reproduced to receive copyright protection; a mere "soulful tune" or "superb singing" that is not reduced to writing does not qualify under the then-current law 4. Exclusion of Performers' Rights: The judgment highlighted a significant gap in Indian law at the time—the disentitlement of singers and musicians from copyright. Justice Krishna Iyer noted that this was "un-Indian" since the musician often provides the major monetary value to a performance, and he urged the legislature to recognize performers' rights. 5. Distinction of "Work" vs. "Accessory": Using the Wallerstein v. Herbert precedent, the Court noted that music composed for a specific drama or film can be viewed as an accessory to the primary work rather than an independent composition | https://www.casemine.com/judgement/in/5609abc9e4b014971140d52c | |||||||||||||||
47 | 45 | Super Cassettes Industries Limited v. Music Broadcast Private Limited 2012 AIR SC 2144 | Super Cassettes Industries Limited | Music Broadcast Private Limited | Supreme Court | radio broadcasting | The respondents sought compulsory licenses under Section 31(1)(b) of the Copyright Act, 1957, to broadcast sound recordings owned by Super Cassettes. While the main complaints were pending, the broadcasters requested interim compulsory licenses to begin broadcasting immediately at rates previously fixed by the Copyright Board for a different organization (PPL). The legal dispute centered on whether the Copyright Board, as a statutory tribunal, possesses the jurisdiction to grant interim relief (in the form of a license) pending the final adjudication of a complaint under Section 31,. Super Cassettes argued the Board lacked such power, while MBPL argued the power was "implied" and "ancillary" to the Board's final authority | March 25, 2002-Commencement of the original voluntary license between the parties; August 25, 2010- Copyright Board issued an order fixing tariff rates for a separate organization (PPL); March 28, 2011-Copyright Board dismissed the request for an interim license, ruling it lacked the power to grant such relief; September 1, 2011-Delhi HC reversed the Board’s decision, holding that interim compulsory licenses were permissible; May 4, 2012-SC delivered its final judgment setting aside the High Court's order | The Supreme Court allowed the appeals and set aside the High Court's direction to grant interim licenses. The Court's primary rulings included: • No Jurisdiction for Interim Licenses: The Copyright Board has no authority to issue interim compulsory licenses under Section 31. • Mandatory Inquiry: Section 31 requires a final order only after a statutory inquiry, which includes giving the copyright owner a "reasonable opportunity of being heard" to determine if their refusal to license was reasonable. • Tribunal Limits: The Board is a "creature of statute" and can only exercise substantive powers explicitly granted by the Copyright Act. • Preservation of Status Quo: While tribunals may have implied powers to preserve the status quo, they cannot grant interim relief that is identical to the final relief sought, as this would alter rights irreversibly before a full hearing | 1. Copyright as a Constitutional Property Right: The Court emphasized that copyright is a valuable legal property right. Under Article 300-A of the Constitution, the state can only deprive an owner of this property (via a compulsory license) through the "authority of law" and for a public purpose. 2. Strict Construction of Compulsory Licensing: The ruling clarified that Section 31 is an exception to the owner's right to control their work and must be applied strictly through the provided statutory mechanism rather than "interim shortcuts". 3. Non-Monetary Grounds for Refusal: The Court noted that a copyright owner might have reasonable non-monetary grounds to withhold a work, such as security threats (e.g., Satanic Verses) or moral concerns. An interim license would bypass the inquiry needed to evaluate these legitimate defenses 4. Rejection of the Doctrine of Implied Power for Mandatory Relief: The Court held that the power to grant a mandatory injunction at the interim stage cannot be inferred from its absence in the statute; if the legislature intended the Board to have such power, it would have stated so expressly. 5. Prevention of "Statutory Licensing" by Proxy: The judgment ensured that "compulsory licensing" (which requires adjudication) is not transformed into "statutory licensing" (which is automatic) through the misuse of interim orders | https://www.casemine.com/judgement/in/56b48d5c607dba348fff2908 | |||||||||||||||
48 | 46 | Ram Chandra Maurya v. Union of India and Ors. 2020 SCC ONLINE IPAB 2 | Ram Chandra Maurya | Union of India and Ors. | Intellectual Property Appellate Board | manufacturing engines | The complainant, who holds a registered copyright for a literary work titled “Motions of 4 & 5 law and Motions of 6 Law” (Licence No. L-65555/2017), alleged that eight companies were manufacturing engines based on the scientific principles described in his work. He contended that his work explained how wind or rotating bodies move air, dust, or water upwards and inwards, and that the respondents' act of manufacturing engines using these "laws" constituted copyright infringement and a criminal offense. He filed the complaint under Section 6 of the Copyright Act, 1957, seeking an order to restrain these companies from manufacturing the engines | January 17, 2018-Copyright Office issued the license for the complainant’s literary work; September 14, 2020- IPAB delivered the final judgment | The IPAB dismissed the complaint as not maintainable. The Board’s decision was based on the following grounds: • Limited Jurisdiction under Section 6: The Board ruled that Section 6 of the Copyright Act only grants the IPAB power to decide two specific questions: (a) whether a work has been published and its date of publication, and (b) whether the term of copyright is shorter in another country than in India. • Wrong Forum for Infringement: Claims regarding copyright infringement and requests for injunctions fall under Chapter XII (Civil Remedies) or Chapter XIII (Criminal Remedies) of the Act, which vest jurisdiction in District Courts and Magistrates, respectively, not the IPAB. • Lack of Locus Standi: The complainant admitted he was not in the business of manufacturing engines or pumps. The Board found he was not an "aggrieved party" or a competitor, and noted that the IPAB does not entertain Public Interest Litigation (PIL) | While the sources state that no new precedent was established regarding substantive infringement claims, the case clarifies several procedural boundaries in Indian copyright law: 1. Strict Interpretation of Section 6: The judgment reaffirms that Section 6 is a narrow provision for specific technical disputes regarding publication and terms of protection; it cannot be used as a "catch-all" provision to bring infringement suits before the IPAB. 2. Idea-Expression Dichotomy (Implicit): Although not explicitly named, the case touches on the principle that copyright protects the literary expression of an idea (the text of the "laws") but does not grant a monopoly over the functional application of those ideas (manufacturing engines), which would typically fall under patent law. 3. Jurisdictional Clarity: It reinforces the separation of powers between the IPAB and the civil/criminal courts, making it clear that the Board lacks the power to grant restraining orders or hear criminal complaints related to copyright 4. Locus Standi in Tribunal Proceedings: The ruling establishes that a petitioner must demonstrate they are an "aggrieved party" with a direct interest in the matter to maintain a petition before the IPAB | https://www.casemine.com/judgement/in/5fb3ba869fca1913a0d09077 | |||||||||||||||
49 | 47 | Midsas Hygiene Industries (P) and Another v. Sudhir Bhatia and Others 2004 DRJ 73 647 | Midsas Hygiene Industries (P) and Another | Sudhir Bhatia and Others | Supreme Court | insecticides | The appellants filed a suit alleging passing off and infringement of copyright regarding the mark and packaging bearing the phrase “Laxman Rekha”. They sought an interim injunction to restrain the respondents from using the mark and deceptively similar packaging for insecticides and related products. The appellants argued that: • They were prior and prominent users of the phrase “Laxman Rekha” since at least 1991. • They held a valid copyright in the marks “Krazy Lines” and “Laxman Rekha” and their specific packaging. • The respondents, who were former associates of the appellants, adopted the mark “Magic Laxman Rekha” and subsequently changed their packaging to be “almost identical” to the appellants' cartons to dishonestly pass off their goods | November 19, 1991- Appellants obtained copyright; February 28, 1992: Appellants sent a notice to the respondent regarding infrignement; May 30, 1996-Respondents applied for trade mark registration; July 31, 2001-Single Judge of HC granted an interim injunction in favor of the appellants; September 20, 2001-Division Bench of the HC vacated the injunction solely due to delay and laches; January 22, 2004-SC delivered its judgment | The Supreme Court set aside the Division Bench's order and restored the interim injunction originally granted by the Single Judge. The Court ruled that: • Injunction as a Norm: In cases of trademark or copyright infringement, an injunction should normally follow once infringement is prima facie established. • Delay is Insufficient: Mere delay or laches in initiating a suit is not enough to deny an injunction in such cases. • Dishonesty Overrides Delay: Because the respondents' adoption of the mark appeared prima facie dishonest—given their prior working relationship with the appellants and the lack of explanation for adopting identical packaging—the injunction was necessary despite the delay | The case reinforced and clarified essential procedural principles for infringement litigation: 1. Rejection of Delay as a Sole Defense: The judgment established a firm rule that delay alone cannot defeat injunctive protection in infringement matters. This ensures that copyright owners do not lose their right to an injunction simply because they did not sue immediately. 2. Prima Facie Dishonesty: The Court emphasized that if a defendant's adoption of a mark or packaging is dishonest, it significantly outweighs any defense of delay by the plaintiff. 3. Protection of Packaging as Copyrighted Work: The case highlights the importance of protecting the “get-up” and color combination of product packaging as a valid subject of copyright and trademark protection against deceptive similarity 4. Automatic Nature of Relief: It settled the principle that once a prima facie case of infringement is made out, the court should lean toward granting an injunction rather than allowing the infringement to continue pending trial | https://www.casemine.com/judgement/in/5609ae06e4b0149711412bc0 | |||||||||||||||
50 | 48 | R.G. Anand v. M/S Delux Films & Ors. 1978 AIR 1613 | R.G. Anand | M/S Delux Films & Ors. | Supreme Court | The appellant, R.G. Anand, a playwright and producer, authored a popular play titled "Hum Hindustani" in 1953, which focused on the theme of provincialism. In 1954, the second defendant, Mohan Sehgal, expressed interest in the play for a potential film and later heard the entire play narrated by the appellant in Delhi. However, in 1955, the defendants announced a film titled "New Delhi". Upon seeing the film in 1956, the appellant filed a suit alleging copyright infringement and piracy, claiming the film was entirely based on his play. He sought damages, an account of profits, and a permanent injunction against the film's exhibition | • February 6–9, 1954: The play was first enacted at Wavell Theatre, New Delhi. • November 19, 1954: Defendant No. 2 wrote to the appellant requesting a synopsis/copy of the play. • January 1955: Defendants met the appellant in Delhi; the play was read out and discussed. • May 1955: Defendants announced the production of the film "New Delhi". • September 1956: The film "New Delhi" was released in Delhi. • May 23, 1967: The Delhi High Court affirmed the District Judge's dismissal of the suit. • August 18, 1978: The Supreme Court delivered the final judgment | The Supreme Court dismissed the appeal, upholding the concurrent findings of the lower courts that there was no violation of copyright. The Court concluded that: • Central Idea is Not Protected: The central theme of "provincialism" is a mere idea and cannot be the subject of copyright. • Substantial Dissimilarities: While there were 18 similarities between the works, the dissimilarities far outweighed the similarities. The film included themes absent in the play, such as the caste system, the evils of dowry, and housing discrimination. • No Infringement: The Court ruled that the film was not a "substantial or material copy" of the play and that its treatment and presentation were materially different | This case is considered the most authoritative Indian precedent on the Idea-Expression Dichotomy and established several foundational tests for infringement: 1. Idea vs. Expression: The Court explicitly stated that there is no copyright in an idea, subject matter, themes, or plots; protection is confined to the form, manner, arrangement, and expression of the idea. 2. The "Lay Observer" or "Spectator" Test: One of the safest tests for infringement is whether a reader or viewer, after seeing both works, gets an unmistakable impression that the subsequent work is a copy of the original. 3. Substantiality Test: To be actionable, a copy must be substantial and material. Trivial or insignificant similarities do not constitute an "unfair appropriation" 4. Colorable Imitation: The Court defined this as a reprehensible attempt to disguise piracy through immaterial changes or by enlarging the scope of the theme to throw a "veil of apparent dissimilarity". 5. Test for Composite Works (Stage vs. Film): The Court noted that proving piracy is more difficult when a stage play is adapted into a film because films have a broader perspective and wider field, allowing for a variety of incidents that change the "colour and complexion" of the original expression. 6. Treatment of Common Sources: Where the same idea is developed from a common source, similarities are inevitable; courts must determine if those similarities exist on fundamental or substantial aspects of the mode of expression | https://www.casemine.com/judgement/in/5609abd0e4b014971140d698 | ||||||||||||||||
51 | 49 | Pearlite Liners Pvt. Ltd. Vs. Jagjit Singh Mago MANU/CP/0003/2000 | Pearlite Liners Pvt. Ltd. | Jagjit Singh Mago | No. A-50317/90-CO | Copyright Board at Panji-Goa | • Legal Basis: The petitioners filed a petition under Section 50 of the Copyright Act, 1957 for rectification of the Register of Copyrights to expunge the respondent’s registration (No. A-50317/90-CO). • The Dispute: The petitioners, who had been dealing in liners since 1974 and had a turnover of Rs. 5 crores, alleged that the respondent (their former agent) obtained the registration by fraudulent misrepresentation. • Specific Claim: The petitioners had already registered their artistic work in 1989 (used since 1974). The respondent, despite being an agent, registered a similar work in his own name in 1990. | • 18 October 1989: Petitioners registered the artistic work (No. 50038/89) • 04 April 1990: Respondent obtained the impugned copyright registration (No. A-50317/90-CO). • 30 November 2000: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered the expunging of the respondent's copyright registration. • Costs: The respondent was ordered to pay Rs. 10,000 as costs to the petitioners. • Reasoning: The decision was based on admission and abandonment. In a parallel Civil Suit in Bangalore (where an injunction was already in force), the respondent had deposed on oath that he had abandoned the use of the artistic work. Additionally, the respondent's father, Mr. Inderjit Singh, appeared before the Board stating they had no objection to the expunction and would withdraw the registration | • Effect of Admissions in Parallel Proceedings: The case demonstrates that a sworn deposition or admission of "abandonment" in a Civil Suit is sufficient grounds for the Copyright Board to order expunction under Section 50 without needing a deep factual inquiry into originality or similarity. • Principal-Agent Protection: It reinforces the principle that an agent cannot surreptitiously register the intellectual property of their principal. The Board acted decisively against the agent who attempted to misappropriate the principal's long-standing artistic work. | https://d2.manupatra.in/ShowPDF.asp?flname=Pearlite_Liners_Pvt_Ltd_vs_Jagjit_Singh_Mago_30112CP20000205152009526COM989202.pdf | |||||||||||||||
52 | 50 | M.K. Exim (India) Ltd. Vs. Radinat Silk Mills (P) Ltd. MANU/CP/0014/2007 | M.K. Exim (India) Ltd. | Radinat Silk Mills (P) Ltd. | No. A-64949/2003 | Copyright Board at New Delhi | Fabrics | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the expunction of the respondent’s copyright registration (No. A-64949/2003). • The Dispute: The petitioner, a manufacturer of fabrics, claimed ownership of the mark/label "ISIEM", having conceived it in 1993 and applied for trademark registration in 1997. They alleged that the respondent’s registered artistic work was an identical copy of their label Specific Allegations: 1. Contradictory Claims: The respondent claimed their work was published in 1991 for copyright registration, yet in their 2001 trademark application for the same mark, they stated the user status as "proposed to be used". 2. Defective Search Certificate: The petitioner argued the respondent obtained the Section 45 Search Certificate by suppressing facts, and the Registrar of Trade Marks failed to cite the petitioner's prior pending application. 3. Procedural Violation: The respondent failed to serve notice under Rule 16(3) of the Copyright Rules | • 27 August 1997: Petitioner filed Trademark Application No. 759200 (claiming user since Dec 1993). • 27 July 2001: Respondent filed Trademark Application No. 1031563 (claiming "proposed to be used"). • 28 March 2002: The Registrar of Trade Marks issued the Search Certificate to the respondent. • 14 June 2003: Petitioner's trademark application was published in the Trade Marks Journal. • 19 September 2007: The Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge registration number A-64949/2003 from the Register. • Reasoning: The Board found the originality of the respondent's work to be in "serious question". The respondent's claim of creation in 1991 was contradicted by their own trademark application in 2001 which stated "proposed to be used." Furthermore, the petitioner had applied for an identical mark in 1997, predating the respondent's verifiable records. • Costs: No order as to costs was made | • Evidentiary Value of "Proposed to be Used": The case established that a declaration of "proposed to be used" in a Trademark application can be used as admission to debunk a claim of prior publication (e.g., claiming creation in 1991) in a subsequent Copyright dispute. This discrepancy is sufficient to disprove the antiquity and originality of the artistic work. • Correcting Registry Errors via Facts: Although the Board noted it lacked jurisdiction to correct a defective Search Certificate issued by the Trademark Office, it ruled it could "make use of the facts" available on record (such as Trade Mark Journals) to determine that the Search Certificate was factually flawed and that the petitioner's rights were prior. • Priority of Application: The decision reinforced that an artistic work created and applied for (via trademark) at an earlier date (1997) takes precedence over a later registration, especially when the later party cannot substantiate their claimed earlier user date | https://d2.manupatra.in/ShowPDF.asp?flname=MK_Exim_India_Ltd_vs_Radinat_Silk_Mills_P_Ltd_1909CP20071102152121506COM46733.pdf | ||||||||||||||
53 | 51 | Avon Cycles Ltd. Vs. Gazebo Industries Ltd. MANU/CP/0015/2007 | Avon Cycles Ltd. | Gazebo Industries Ltd. | No. A-55746/99 | Copyright Board at New Delhi | Bicycles | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the rectification of the Register of Copyrights to expunge the respondent’s registration (No. A-55746/99). • The Dispute: The petitioner, a manufacturer of bicycles under the famous trademark "AVON" since 1952, alleged that the respondent’s copyright registration for the word "AVION" was deceptively similar. They argued that the mere addition of the letter "I" to "AVON" did not constitute originality and was an attempt to infringe the petitioner's statutory rights. • Respondent's Stance: The respondent did not appear or file a written statement but had entered into a compromise in a parallel civil suit | • 28 June 2007: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered that the respondent's copyright registration (No. A-55746/99) be expunged. • Basis: The decision was based on a Compromise Deed and a decree passed by the District Judge, Ludhiana. In this settlement, the respondent explicitly agreed not to oppose the cancellation petition pending before the Copyright Board and consented to the expunction. • Costs: No order as to costs was made | • Jurisdictional Exclusivity: The Board reiterated the principle established in Vandana v. Vandana Saree Emporium that Civil Courts have no jurisdiction to rectify the Copyright Register. While a Civil Court can record a compromise regarding infringement, the actual act of expunging the entry must be done by the Copyright Board. • Effect of Civil Settlements: The case illustrates that the Copyright Board will give effect to a consent decree/compromise deed from a Civil Court wherein a party agrees to the cancellation of their copyright, treating it as a non-opposition to the rectification petition. | https://d2.manupatra.in/ShowPDF.asp?flname=Avon_Cycles_Ltd_vs_Gazebo_Industries_Ltd_28062007_CP20071102152121507COM649129.pdf | ||||||||||||||
54 | 52 | Enercon Systems Pvt. Ltd. Vs. The Registrar of Copyrights MANU/CP/0001/2008 | Enercon Systems Pvt. Ltd. | The Registrar of Copyrights | Copyright Board at New Delhi | • Legal Basis: The appellant filed an appeal under Section 72(1) of the Copyright Act, 1957, challenging the order of the Registrar of Copyrights dated 03 December 2003,. • The Dispute: The Registrar had rejected two applications for the registration of literary works titled "Contents of Corporate Campaign" and "Contents of Enercon Advertisement". • Registrar's Ground for Rejection: The Registrar held that the works contained only advertisement slogans, general instructions, and commonly used phrases which lacked "originality" under Section 13 of the Act,. • Appellant's Contention: The appellant argued that the works were an amalgam of text, design, and illustrations authored by their Managing Director, Ms. Hema Hattangady. They contended that under settled law (specifically the Division Bench judgment in Pepsi Co. Inc. v. Hindustan Coca Cola), advertising slogans forming the theme of a product are entitled to copyright protection | • 12 August 2002: First publication of the works in India. • 29 November 2002: Appellant filed applications for registration (dated 06.11.2002). • 03 December 2003: The Registrar of Copyrights passed the order rejecting the applications. • 07 June 2004: The appellant filed the appeal before the Copyright Board. • 10 July 2008: The Copyright Board delivered the final judgment allowing the appeal. | • Appeal Allowed: The Board accepted the appeal and set aside the Registrar's order. • Direction: The Registrar was directed to proceed with the registration of the works. • Delay Condoned: The Board condoned a delay of 3 months and 4 days in filing the appeal, guided by the principles of the Civil Procedure Code, noting there was no opposition from the respondent on this score. • Costs: No order as to costs was made | • Standard of Originality: The Board reinforced the classic interpretation of "originality" derived from University of London Press v. University Tutorial Press (1916). It clarified that originality does not mean "inventive thought" or "novelty"; it merely means the work must originate from the author and not be copied from another work. • Copyrightability of Advertisement Slogans: The case affirmed that advertisement slogans and commercial literature are eligible for copyright protection. The Board rejected the Registrar’s view that "commonly used phrases" in advertisements are automatically disqualified, citing the Pepsi Co. Division Bench ruling that slogans forming a campaign theme are protectable. • Merit is Irrelevant: The Board explicitly stated that copyright law does not judge the excellence or merit of a work. If a work is not copied and originates from the author, copyrightability follows ipso facto. • Procedural Flexibility (Delay Condonation): Although the Copyright Act lacks specific provisions for condoning delay in filing appeals, the Board held it is conceptually guided by the Civil Procedure Code (CPC) and can condone delay in the interest of fairness | https://d2.manupatra.in/ShowPDF.asp?flname=Enercon_Systems_Pvt_Ltd_vs_The_Registrar_of_CopyriCP080001COM298003.pdf | ||||||||||||||||
55 | 53 | Kickapoo Co. Vs. Perry Bottling Co. MANU/CP/0001/2000 | Kickapoo Co. | Perry Bottling Co. | No. A-46663/85 | Copyright Board at New Delhi | soft drinks | • Legal Basis: The petition was filed under Section 50 of the Copyright Act, 1957, seeking the rectification (expunction) of an entry in the Register of Copyrights. • The Dispute: The petitioner, M/s. Kickapoo Company, claimed to be the authorised franchisee of the "Kickapoo" label since 1977, having received exclusive rights from M/s. Kickapoo Joy Juice International (owned by M/s. Moxie Industries Inc.). • The Grievance: The petitioner alleged that the respondent, M/s. Perry Bottling Company, mala fide registered the "Kickapoo" label (No. A-46663/85) in 1985 claiming to be the author, despite the petitioner using it on soft drinks since 1977. • Respondent's Defense: The respondent argued that the petitioner was not a "person aggrieved" and lacked locus standi because: 1. The petitioner was merely a franchisee, not the owner (Moxie Industries). 2. The petitioner had not complied with FERA laws. 3. Under the proviso to Section 60, the petitioner ceased to be "aggrieved" because they were already prosecuting/defending civil suits regarding the copyright in Delhi and Jodhpur | 19 June 2000: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered that the entry bearing registration No. A-46663/85 be expunged from the Register of Copyrights. • Costs: The respondent was ordered to pay Rs. 2,500 as costs to the petitioner. • Key Finding: The respondent was found not to be the author. The Board relied on a certified copy of a statement (Ex. P1(b)) wherein the respondent admitted finding the artistic work on empty bottles bought from glass dealers in Bombay. Since he "found" it rather than created it, he could not be the author or owner under Section 17 | • Distinction between Section 50 and Section 60: The Board clarified that the proviso to Section 60 (which stops a suit for groundless threats once an actual infringement suit begins) does not apply to rectification proceedings under Section 50. The filing or defending of a civil suit does not strip a party of their status as a "person aggrieved" for the purpose of rectifying the register. • Franchisee Standing: The case established that a franchisee holding exclusive rights to use a label is a "person aggrieved" entitled to challenge a wrongful registration, even if they are not the ultimate copyright owner (in this case, the foreign entity Moxie Industries). • "Found" Work cannot be Copyrighted: The decision reinforced that a person who merely finds an artistic work (e.g., on empty bottles) and registers it cannot claim authorship. Admission of finding the work is sufficient proof to negate a claim of original authorship | https://d2.manupatra.in/ShowPDF.asp?flname=Kickapoo_Co_vs_Perry_Bottling_Co__19062000__CopyriCP200006051523153722COM149154.pdf | ||||||||||||||
56 | 54 | Office Lava to S.P.A. Vs. Previndha Jagivadas Mehta MANU/CP/0002/2008 | Office Lava to S.P.A | Previndha Jagivadas Mehta | Nos. A-60106/2001, A-60112/2001, and A-60109/2001 | Copyright Board at Bangalore | Auto gas conversion kits | • Legal Basis: The petitioner filed three petitions under Section 50 of the Copyright Act, 1957, seeking the expunction of copyright registrations (Nos. A-60106/2001, A-60112/2001, and A-60109/2001). • The Dispute: The petitioner, a pioneer in manufacturing Auto Gas Conversion kits, alleged that the respondent (a relative of the petitioner's former selling agent) misappropriated the petitioner's detailed technical drawings from 1997. The respondent registered these as his own artistic works and used them to file civil suits against the petitioner. • Core Issue: The petitioner argued that the drawings were used for manufacturing Electro Valves/Solenoid Valves and had been reproduced more than 50 times by an industrial process, thereby losing protection under Section 15(2) of the Copyright Act | • 07 October 1997: Petitioner commenced manufacturing the products. • 31 October 2001: Date of the respondent’s impugned Copyright Registration (No. A-60106/2001). • 03 April 2003: Hearing where the respondent's counsel admitted the drawings had been used more than 50 times. • 02 February 2006: The Board imposed costs of Rs. 30,000 on the respondent for seeking adjournment, which remained unpaid. • 15 January 2008: The Copyright Board delivered the final order | • Petitions Allowed: The Board ordered the expunction of all three copyright registrations from the Register. • Reasoning: The Board held that the registrations fell within the "mischief of Section 15(2)". The respondent admitted that the drawings were prepared for manufacturing Solenoid valves and had been reproduced more than 50 times industrially. Consequently, the drawings lost copyright protection and were not valid "artistic works" under Section 2(c). • Costs: No final order as to costs was made (despite the previous unpaid order) | • Engineering Drawings vs. Copyright: The case reinforced that technical drawings created solely for the purpose of manufacturing an industrial product (like a valve) lose copyright protection once that product is reproduced more than 50 times. The protection then shifts to the domain of the Designs Act. • Objective of the Work: Citing Microfibres Inc. v. Girdhar and Co. and Dart Industries v. Techno Plast, the Board clarified that if a drawing's objective is purely industrial (to create a product design) and it has no independent existence as art (i.e., not meant to be framed or hung), it cannot claim protection under the Copyright Act. • Admissibility of Design Intent: The decision highlights that an admission in pleadings specifically stating that drawings were created "for manufacturing" a product is sufficient to trigger Section 15(2) and negate copyright protection, regardless of the artistic skill involved | https://d2.manupatra.in/ShowPDF.asp?flname=Office_Lava_to_SPA_vs_Previndha_Jagivadas_Mehta_15CP200811021521171447COM927318.pdf | ||||||||||||||
57 | 55 | Leo Food Vs. Nutrine Confectionery Co. (P) Ltd. MANU/CP/0003/2008 | Leo Food | Nutrine Confectionery Co. (P) Ltd. | No. A-53770/97 | Copyright Board at Bangalore | confectionary products | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the rectification of the Register of Copyrights to expunge the respondent’s registration (No. A-53770/97) for the artistic work "MAHA LACTO". • The Dispute: The petitioner, who used the mark "LEGO MEGA LACTO" for confectionary products, claimed to be a "person aggrieved" because the respondent had filed a civil suit (O.S. No. 113 of 2002) against them for infringement and passing off • Specific Allegations: 1. Inconsistent Claims: The respondent claimed different dates of user/publication (1990 vs. 1994) for similar works before different authorities (Trade Mark Registry vs. Copyright Office). 2. Prior Work: The petitioner argued the respondent’s work lacked originality because a similar label, "PARRY LACTO KING", had been applied for by a third party (Parrys Confectionery Ltd.) as early as 1989. 3. Defective Certificate: The petitioner alleged the Section 45 Certificate from the Registrar of Trade Marks was obtained wrongly while the Parry’s application was pending. | • 08 May 1989: Application date for "Parry’s Lacto King" (No. 510009) by a third party • 13 March 1997: Date of the Respondent’s impugned Copyright Registration (No. A-53770/97) • 15 January 2008: The Copyright Board delivered the final order. | • Dismissal: The petition for rectification was dismissed. • Key Findings: 1. Originality Upheld: The Board found the "MAHA LACTO" label to be distinct in get-up and style from "PARRY LACTO KING". The common elements ("Lacto" and "King") were descriptive and subject to disclaimers, while the visual arrangement was sufficiently different to constitute an original work. 2. Jurisdiction Limitation: The Board ruled it lacked jurisdiction to adjudicate the validity of the Section 45 Certificate issued by the Registrar of Trade Marks. Challenges to such quasi-judicial decisions lie with the High Court (or IPAB), not the Copyright Board. | • Originality vs. Deceptive Similarity: The Board distinguished between Trade Mark law (which looks for deceptive similarity) and Copyright law (which looks for originality). ◦ The Board clarified that a work might be "deceptively similar" to an earlier work under Trade Mark law, yet still qualify for copyright protection if it meets the standard of "originality" (i.e., it owes its origin to the author and is not a direct copy). A later work can be a "good work" under Copyright law even if it faces hurdles under TM law. • Definition of "Person Aggrieved": The decision reaffirmed that a defendant in a civil suit for infringement is automatically considered a "person aggrieved" entitled to file a rectification petition under Section 50, regardless of the merit of their own claims. • Limited Scope regarding Section 45: The case established that the Copyright Board cannot act as an appellate authority over the Registrar of Trade Marks regarding the issuance of the clearance certificate required under Section 45(1) | https://d2.manupatra.in/ShowPDF.asp?flname=Leo_Food_vs_Nutrine_Confectionery_Co_P_Ltd_1501200CP200811021521171448COM294405.pdf | ||||||||||||||
58 | 56 | Marley Cooling Tower Co. Vs. Paharpur Cooling Pvt. Ltd. MANU/CP/0002/2000 | Marley Cooling Tower Co. | Paharpur Cooling Pvt. Ltd. | No. A-18252/77 and A-18254/77 | Copyright Board at Calcutta | • Legal Basis: The petitioner (a US company) filed petitions under Section 50 of the Copyright Act, 1957, seeking the rectification/expunction of Copyright Registrations No. A-18252/77 and A-18254/77 held by the respondent. • The Dispute: The petitioner and respondent had a technical collaboration agreement from 1962 to 1992. The petitioner alleged that the respondent, while acting as a licensee/partner, fraudulently registered the petitioner's artistic logo (an ellipse with water drops and waves) in their own name in 1977 without disclosure • Specific Allegations: 1. Breach of Trust: The respondent secretly registered the logo while in a fiduciary relationship with the petitioner. 2. Fraudulent Authorship: The respondent claimed the logo was created in 1962 by Mr. Vikram Swaroop (son of a director). The petitioner argued this was impossible as Mr. Swaroop was only 13 years old at the time, and the respondent company had not yet entered the cooling tower business. 3. Lack of Originality: The respondent’s mark was a direct copy of the petitioner’s logo, merely substituting the word "MARLEY" with "PAHARPUR" | • 01 July 1962: The parties entered into an International Technical Cooperation Agreement. • 29 September 2000: The Copyright Board delivered the final order | • Petitions Allowed: The Board ordered the Registrar to expunge both registration entries (No. A-18252/77 and A-18254/77) from the Register of Copyrights. • Costs: The respondent was ordered to pay Rs. 10,000 per petition (Total Rs. 20,000) as compensatory costs to the petitioner for obtaining registration fraudulently. • Key Findings: 1. Authorship Rejected: The Board found it "far-fetched" and impossible that a 13-year-old boy created a highly technical logo for a business (cooling towers) the company had not yet entered in 1962. 2. International Protection: Under the Berne and UCC Conventions (read with Section 40), the petitioner’s work created in the USA in 1970 was deemed to exist in India simultaneously. Thus, the respondent's 1977 registration was not for an original work. 3. Potential Criminal Offence: The Board observed that the respondent had made false statements in the Statement of Particulars, constituting an offence under Section 67 of the Act, and suggested the Registrar could initiate proceedings | • Fiduciary Responsibility in Joint Ventures: The case established that a domestic partner in a collaboration agreement acts in a fiduciary capacity. Secretly registering the foreign partner's intellectual property constitutes fraud and "suppression of facts," validating rectification under Section 50. • Deemed Existence of Foreign Works: The Board clarified that for countries party to the Berne/UCC Conventions, an artistic work created abroad is deemed to be protected in India from the moment of its creation, without the need for formal registration in India. A later registration by a local party is invalid for lack of originality. • Inference of Fraud from "Found" or "Child" Authorship: The ruling highlights that claims of authorship by minors (e.g., a 13-year-old) for complex technical commercial logos, especially when pre-dating the actual business activity, will be scrutinized strictly and likely rejected as fraudulent attempts to establish priority. • Section 67 Application: It is one of the notable instances where the Board explicitly identified that providing false particulars for registration falls under the criminal provisions of Section 67, going beyond mere civil rectification | https://d2.manupatra.in/ShowPDF.asp?flname=Marley_Cooling_Tower_Co_vs_Paharpur_Cooling_Pvt_LtCP200006051523153823COM913290.pdf | |||||||||||||||
59 | 57 | Challenger Knitting Mills Vs. Kothari Hosiery Factory Citation: MANU/CP/0002/2002 | Challenger Knitting Mills | Kothari Hosiery Factory | No. A-53224/96 | Registrar of Copyrights at New Delhi | • The Application: M/s. Challenger Knitting Mills (Applicant) filed an application to register the copyright in an artistic work titled "Kashmir Beauty". • The Objection: M/s. Kothari Hosiery Factory (Objector) opposed the registration. They held a prior copyright registration (No. A-53224/96) for their label "Kothari". • Basis of Objection: The objector claimed the applicant's work was a copy. They relied heavily on an interim order from the City Civil Court, Calcutta (Suit No. 6638E/2001), which had already restrained the applicant from using the name "Kashmir Beauty" and found the labels to be "deceptively similar" regarding color combination and layout. | • 13 September 2001: The City Civil Court, Calcutta passed an interim injunction against the applicant, finding the works deceptively similar. • 28 February 2002: The Registrar of Copyrights delivered the final judgment. | • Application Allowed: The Registrar allowed the application and directed the Registry to enter the particulars of "Kashmir Beauty" in the Register of Copyrights. • Finding: The Registrar ruled that "Kashmir Beauty" was not a slavish copy of the "Kothari" label. Despite the Civil Court's finding of deceptive similarity for trademark purposes, the Registrar found enough visual differences (in text, specific design elements like arrows vs. cups, and color shades) to establish that the applicant's work had "minimum originality" required for copyright | • Trademark vs. Copyright Standards: The case sharply distinguished between the tests for the two rights: ◦ Trademark: The test is "deceptive similarity" (whether a consumer is confused). ◦ Copyright: The test is "slavish copying" (whether the work is an exact reproduction). ◦ The Registrar established that a work might be deceptively similar enough to infringe a trademark but still possess enough independent labor and skill to qualify for its own copyright. • Independence from Civil Court Findings: The decision affirmed that copyright registration proceedings are independent of civil suits. A Civil Court's finding of "deceptive similarity" in a passing-off/trademark suit does not bind the Registrar to reject a copyright application if the work is not a direct copy. • Standard of Originality: Reaffirming established principles (Associated Publishers v. K. Bhashyam), the Registrar held that the requirement for copyright is "minimal originality". As long as the work is not a slavish copy and shows some independent judgment (e.g., changing "Insist on" to "Always Depend on", or changing an arrow design to a cup design), it is protectable | https://d2.manupatra.in/ShowPDF.asp?flname=Challenger_Knitting_Mills_vs_Kothari_Hosiery_Factocp020002COM287527.pdf | |||||||||||||||
60 | 58 | Deoki Hosiery Factory Vs. Chittaranjan Kumar Tarvey MANU/CP/0008/2008 | Deoki Hosiery Factory | Chittaranjan Kumar Tarvey | No. A-74541/2005 | Copyright Board at Kolkata | hosiery goods | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the expunction of the respondent’s copyright registration (No. A-74541/2005) dated 14 October 2005. • The Dispute: The petitioner, a manufacturer of hosiery goods using the marks "NICE" and "NICE TARANG", alleged that the respondent surreptitiously registered a deceptively similar label "NICE TARANG VEST". • Specific Grievance: The petitioner had already filed a civil suit (Suit No. 767 of 2004) against the respondent for infringement. Despite appearing in this suit in 2004, the respondent applied for copyright in 2005 without serving notice to the petitioner, violating Rule 16(3) of the Copyright Rules | • 01 January 1970: The user date claimed by the petitioner in their trademark advertisement. • 16 September 2003: Petitioner issued a Caution Notice against infringers in Hindi Hindustan. • 14 June 2004: Petitioner filed Civil Suit No. 767 of 2004 against the respondent regarding the marks "NICE" and "NICE TARANG". • 27 July 2004: Respondent entered appearance in the said civil suit. • 16 May 2005: Respondent applied for the impugned copyright registration. • 14 October 2005: Date of the impugned Copyright Registration (No. A-74541/2005). • 11 April 2008: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered the Registrar to expunge the entry from the Register. • Reasoning: The decision rested solely on the violation of Rule 16(3). The Board found that since the respondent had already appeared in a civil suit filed by the petitioner regarding the same subject matter before applying for registration, he was fully aware of the petitioner's interest. Therefore, he was under a statutory duty to give notice to the petitioner, which he failed to do. • Costs: No order as to costs was made. | • Effect of Pending Litigation on Registration Procedure: The case established that the existence of a prior civil suit between parties regarding a work conclusively proves that the applicant is aware of an "interested person." • Mandatory Notice (Rule 16(3)): It reinforced that Rule 16(3) is not a mere formality. If an applicant knows of a dispute (proven by their appearance in a lawsuit) and fails to serve notice to the adverse party when applying for copyright, this suppression is a fatal procedural error warranting immediate expunction, rendering other grounds (like originality) unnecessary to examine | https://d2.manupatra.in/ShowPDF.asp?flname=Deoki_Hosiery_Factory_vs_Chittaranj_an_Kumar_TarveCP200811021521171451COM719667.pdf | ||||||||||||||
61 | 59 | G.K. Soap Factory Vs. Malhan Traders MANU/CP/0004/2002 | G.K. Soap Factory | Malhan Traders | Copyright Board at New Delhi | • Legal Basis: The petitioner filed a petition under Section 50 of the Copyright Act, 1957 for the rectification of the Copyright Register. • The Dispute: The petitioner (a soap manufacturer) sought to expunge the respondent’s copyright registration for a wrapper bearing the mark "MALHAN". • Petitioner’s Claim: The petitioner claimed to have adopted the mark in 1992, naming it after a foreman. They alleged the respondent was merely a purchaser who misappropriated the wrapper design. • Respondent’s Defense: The respondent (a partnership firm) argued they adopted the mark in 1993 because all partners had the surname "Malhan". They contended they owned the brand and merely outsourced the manufacturing to the petitioner, meaning the legal right to the wrapper remained with the respondent | • 10 March 1992: Date of a bill for a "colour block" produced by the petitioner (adduced as evidence but deemed vague). • 12 January 1993: Earliest bill produced by the petitioner showing the sale of "MALHAN" soap. • 07 June 2002: The Copyright Board delivered the final judgment | • Dismissal: The petition was dismissed. • Ownership Findings: The Board rejected the petitioner's claim of authorship. It found the petitioner's story—that they named the soap after a foreman whose full name and whereabouts were unknown to be a "piece of fiction" and an afterthought. • Validation of Respondent's Claim: The Board accepted the respondent's claim as credible because "Malhan" was the actual surname of the partners. The Board ruled the petitioner failed to prove they were the author or owner of the artistic work. • Costs: Parties were ordered to bear their own costs. | • Outsourcing/Contract Manufacturing: The case judicially recognized the business practice where brand owners outsource production. The Board held that a manufacturer does not acquire copyright in a brand/wrapper merely by producing the goods for the brand owner. It noted: "Shoes sold under a famous brand are produced by many persons except the owner... the conduct of the respondent in outsourcing his washing soap... is not something unheard of". • Sales Bills vs. Copyright Ownership: The Board clarified that invoices proving the sale of a product (e.g., "Malhan soap") do not automatically serve as proof of ownership of the copyright in the wrapper/label. The bills proved the transaction of goods, not the ownership of the artistic work. • Credibility of Adoption History: The decision highlighted that the rationale for adopting a mark influences the determination of ownership. The respondent's use of their own surname was found logical, whereas the petitioner's vague story about a migrated foreman undermined their claim of original authorship | https://d2.manupatra.in/ShowPDF.asp?flname=GK_Soap_Factory_vs_Malhan_Traders_07062002__Copyricp020004COM81804.pdf | ||||||||||||||||
62 | 60 | P.R. Srinivasan & Sons Vs. Sri Devi Firm 1999 SCC ONLINE CB 3 | P.R. Srinivasan & Sons | Sri Devi Firm | No. A-53402/96 | Copyright Board at Bangalore | • Legal Basis: The petitioner filed a petition under Section 50 of the Copyright Act for the cancellation of the respondent’s copyright registration (No. A-53402/96). • The Dispute: The petitioner, a manufacturer of vermicelli and ada under the brand "Kuthuvilakku" (a lamp design) since 1966, alleged that the respondent slavishly copied their artistic work. • Specific Allegations: 1. Prior Business Relationship: The respondent had previously purchased goods from the petitioner, giving them direct access to the design. 2. Identical Copying: The respondent’s label was identical in content and color scheme. They even used the name "Srinivasan" in their label, despite having no partner named Srinivasan, solely to deceive consumers. 3. Passing Off: The registration was obtained to pass off the respondent's goods as those of the petitioner. | • 01 April 1992: Petitioner registered the copyright for the artistic work. • 26 October 1992: Petitioner reconstituted the partnership deed. • 28 August 1996: Respondent obtained the impugned Copyright Registration (No. A-53402/96). • 20 July 1999: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered the Registrar to expunge the respondent's registration (No. A-53402/96). • Costs: The respondent was ordered to pay Rs. 10,000 as compensatory costs to the petitioner due to the evident bad faith and copying. • Reasoning: The Board found the respondent’s work to be a "verbatim reproduction" of the petitioner's work. The respondent registered their work four years after the petitioner, despite knowing of the petitioner's rights, with the clear intention of cheating consumers | • Authorship and Employment (Section 17): The case clarified that the death of the author (Mr. Srinivasan) does not affect the validity of a copyright registered in the name of a firm. ◦ The Board held that whether the author is a partner or an employee, under Section 17, the copyright vests in the employer/firm. Therefore, the rights continue with the firm regardless of changes in partnership or the death of the original author. • Religious Symbols vs. Copyright User: The Board ruled that printing a religious symbol (like "Kuthuvilakku"/Lakshmi lamp) on calendars does not constitute proof of prior commercial use of a specific artistic label. ◦ While the symbol may appear on calendars as a sign of prosperity/religion, this is distinct from using a specific artistic layout as a trademark or label for goods. • Inference of Bad Faith: The decision highlights that adopting the name of a competitor's partner (e.g., "Srinivasan") when no such person exists in one's own firm is strong evidence of an intention to deceive and "pass off" goods | https://www.casemine.com/judgement/in/5a6576084a9326024ad46b95 | |||||||||||||||
63 | 61 | -Mr. Jaininder Jain and others v Mr. Arihant Jain and others 2009 PTC 41 492 | Mr. Jaininder Jain and others | Mr. Arihant Jain and others | Delhi High Court | • Legal Basis: The appellant filed an appeal under Section 72(1) of the Copyright Act, 1957, challenging the order of the Registrar of Copyrights dated 03 December 2003. • The Dispute: The Registrar had rejected two applications for the registration of literary works titled "Contents of Corporate Campaign" and "Contents of Enercon Advertisement". • Registrar's Ground for Rejection: The Registrar held that the works contained only advertisement slogans, general instructions, and "commonly used phrases" which lacked "originality" under Section 13 of the Act. • Appellant's Contention: The appellant argued that the works were an amalgam of text, design, and illustrations authored by their Managing Director, Ms. Hema Hattangady. They contended that under settled law (specifically the Division Bench judgment in Pepsi Co. Inc. v. Hindustan Coca Cola), slogans forming the theme of an advertisement are entitled to copyright protection | • 12 August 2002: First publication of the works in India. • 29 November 2002: Appellant filed the applications for registration (dated 06.11.2002). • 03 December 2003: The Registrar of Copyrights passed the order rejecting the applications. • 07 June 2004: The appellant filed the appeal before the Copyright Board. • 04 July 2008: The Copyright Board delivered the final judgment | • Appeal Allowed: The Board accepted the appeal and set aside the Registrar's order. • Direction: The Registrar was directed to proceed with the registration of the works. • Delay Condoned: The Board condoned a delay of 3 months and 4 days in filing the appeal. Although the Act lacks specific provisions for this, the Board held it is conceptually guided by the Civil Procedure Code (CPC) and noted there was no opposition from the respondent. • Costs: No order as to costs was made. | • Standard of Originality: The Board reinforced the classic interpretation of "originality" derived from University of London Press v. University Tutorial Press (1916). It clarified that originality does not mean "inventive thought" or "novelty"; it merely means the work must originate from the author and not be copied from another work. • Copyrightability of Advertisement Slogans: The case affirmed that advertisement slogans and commercial literature are eligible for copyright protection. The Board rejected the Registrar’s view that "commonly used phrases" are automatically disqualified, citing the Pepsi Co. Division Bench ruling that slogans forming a campaign theme are protectable. • Merit is Irrelevant: The Board explicitly stated that copyright law does not judge the excellence or merit of a work. If a work is not copied and originates from the author, copyrightability follows ipso facto. • Procedural Flexibility (Delay Condonation): The Board established that despite the lack of explicit statutory provisions in the Copyright Act for condoning delay in appeals, it can apply the principles of the Civil Procedure Code to ensure fairness | https://www.casemine.com/judgement/in/56090cebe4b0149711178697 | ||||||||||||||||
64 | 62 | -Enercon Systems Pvt. Ltd. Vs. The Registrar of Copyrights MANU/CP/0001/2008 | Enercon Systems Pvt. Ltd. | The Registrar of Copyrights | Copyright Board at New Delhi | • Legal Basis: The appellant filed an appeal under Section 72(1) of the Copyright Act, 1957, challenging the order of the Registrar of Copyrights dated 03 December 2003,. • The Dispute: The Registrar had rejected two applications for the registration of literary works titled "Contents of Corporate Campaign" and "Contents of Enercon Advertisement". • Registrar's Ground for Rejection: The Registrar held that the works contained only advertisement slogans, general instructions, and commonly used phrases which lacked "originality" under Section 13 of the Act,. • Appellant's Contention: The appellant argued that the works were an amalgam of text, design, and illustrations authored by their Managing Director, Ms. Hema Hattangady. They contended that under settled law (specifically the Division Bench judgment in Pepsi Co. Inc. v. Hindustan Coca Cola), advertising slogans forming the theme of a product are entitled to copyright protection | • 12 August 2002: First publication of the works in India. • 29 November 2002: Appellant filed applications for registration (dated 06.11.2002). • 03 December 2003: The Registrar of Copyrights passed the order rejecting the applications. • 07 June 2004: The appellant filed the appeal before the Copyright Board. • 10 July 2008: The Copyright Board delivered the final judgment allowing the appeal. | • Appeal Allowed: The Board accepted the appeal and set aside the Registrar's order. • Direction: The Registrar was directed to proceed with the registration of the works. • Delay Condoned: The Board condoned a delay of 3 months and 4 days in filing the appeal, guided by the principles of the Civil Procedure Code, noting there was no opposition from the respondent on this score. • Costs: No order as to costs was made | • Standard of Originality: The Board reinforced the classic interpretation of "originality" derived from University of London Press v. University Tutorial Press (1916). It clarified that originality does not mean "inventive thought" or "novelty"; it merely means the work must originate from the author and not be copied from another work. • Copyrightability of Advertisement Slogans: The case affirmed that advertisement slogans and commercial literature are eligible for copyright protection. The Board rejected the Registrar’s view that "commonly used phrases" in advertisements are automatically disqualified, citing the Pepsi Co. Division Bench ruling that slogans forming a campaign theme are protectable. • Merit is Irrelevant: The Board explicitly stated that copyright law does not judge the excellence or merit of a work. If a work is not copied and originates from the author, copyrightability follows ipso facto. • Procedural Flexibility (Delay Condonation): Although the Copyright Act lacks specific provisions for condoning delay in filing appeals, the Board held it is conceptually guided by the Civil Procedure Code (CPC) and can condone delay in the interest of fairness | https://d2.manupatra.in/ShowPDF.asp?flname=Enercon_Systems_Pvt_Ltd_vs_Registrar_of_CopyrightsCP200811021521171558COM692673.pdf | ||||||||||||||||
65 | 63 | In Re: Aananda Expanded Italic, Aananda Expanded Bold, Aananda Expanded with x/xx Expanded and Aananda Expanded Bold Italic (Applications by M/s. ABP Ltd.) MANU/CP/0001/2002 | M/s. ABP Ltd. | Copyright Office | Registrar of Copyrights at New Delhi | Fonts/typeface | • Initial Rejection: M/s. ABP Ltd. filed four applications to register copyright in Bengali fonts/typefaces as "artistic works". The Copyright Office initially rejected these, stating fonts do not qualify as artistic works under Section 2(c) of the Copyright Act, 1957. • Writ Petition: Aggrieved by the rejection without a hearing, ABP Ltd. filed a writ petition in the Calcutta High Court. The High Court set aside the rejection order and directed the Registrar to pass a fresh order after affording the applicant an opportunity to be heard. • Applicant's Claim: ABP Ltd. argued that the fonts, developed by their employee Ms. Debrani Gupta using digital technology, involved significant labor, skill, and "artistic craftsmanship," and were thus entitled to protection | • 09 October 2001: Hearing held pursuant to the High Court's direction. • 15 January 2002: The Registrar of Copyrights delivered the final judgment | • Rejection: The applications for registration were rejected. • Reasoning: 1. Not an Artistic Work: The Registrar held that typefaces do not fall under the definition of "artistic work" in Section 2(c). Applying the principle of ejusdem generis, the phrase "any other work of artistic craftsmanship" is restricted to works similar to paintings or sculptures and does not extend to typefaces unless the legislature explicitly includes them (as done in the UK). 2. Section 15(2) Bar: Even if the fonts were considered artistic works, they qualify as "designs" (patterns) capable of registration under the Designs Act, 1911. Since ABP Ltd. admitted to using them since 1998 (implying more than 50 reproductions by industrial process), copyright protection ceased to exist under Section 15(2) | • Typefaces are Not Copyrightable: The case established that fonts and typefaces are not protected as "artistic works" under the Indian Copyright Act. The Registrar clarified that unlike the UK (which amended its law in 1988 to protect typefaces), Indian law lacks specific provisions for them. • "Ejusdem Generis" Interpretation: The decision used the statutory interpretation rule of ejusdem generis to limit the scope of "artistic craftsmanship." It ruled that this category cannot be an omnibus term to include applied art forms like fonts that are not expressly listed in the statute. • Design vs. Copyright: It reinforced the boundary set by Section 15(2). The Registrar noted that typefaces are "patterns" registrable under the Designs Act. Therefore, once they are industrially reproduced more than 50 times, they lose any potential copyright protection. • No Common Law Copyright: The judgment reiterated Section 16, emphasizing that India does not recognize common law copyright; a work must strictly fit within the statutory definitions to claim protection | https://d2.manupatra.in/ShowPDF.asp?flname=In_the_Case_of_Aananda_Expanded_Italic_Aananda_Expcp020006COM628041.pdf | |||||||||||||||
66 | 64 | In Re: Kangaro Industries MANU/CP/0008/2002 | Kangaro Industries | Shri Jaininder Jain | Dy. No. 2086/99-COA | Copyright Board at New Delhi | • The Application: M/s. Kangaro Industries (Applicant) filed an application (Dy. No. 2086/99-COA) to register copyright in an artistic work titled "Kangaro", which featured an image of a kangaroo in a leaping posture against the background of a globe. • The Objection: Shri Jaininder Jain (Objector), a relative of the applicant, opposed the registration. • Basis of Objection: The Objector argued that by virtue of a family settlement, they were the exclusive proprietors of the trade mark "Kangaro". They contended that since they owned the word mark, no one else was entitled to create or register a "device" (image) of a kangaroo. • Procedural Request: The Objector requested the Copyright Board to keep the application in abeyance because the dispute regarding the trademark ownership was pending judgment before a Division Bench of the High Court | • 22 February 2002: Date of the hearing where arguments from both parties were heard. • 28 February 2002: The Registrar of Copyrights delivered the final order | • Application Allowed: The Registrar allowed the application and directed the Registry to register the artistic work. • Rejection of Abeyance: The request to pause proceedings pending the High Court decision was rejected. The Registrar held that the High Court case concerned the ownership of the trademark word "Kangaro," whereas the matter at hand was the copyright of a specific artistic drawing, which was not the subject matter of the High Court dispute | • Trademark vs. Copyright Scope: The case firmly established that owning a trademark in a word (e.g., "Kangaro") does not grant the owner a monopoly over the artistic depiction of the object/animal represented by that word. The Registrar noted that accepting such a proposition would protect an "idea" rather than an expression, which is contrary to copyright law. • Global Implications (The "Australia" Argument): In a notable observation regarding international copyright principles (Berne Convention/TRIPS), the Registrar reasoned that if the objector's argument were accepted, Australians would have to seek the objector's permission to depict their own national animal. This reductio ad absurdum highlighted that no single entity can monopolize the depiction of a natural animal. • Originality Burden: The decision clarified that to refuse copyright, an objector must prove the work is a "slavish copy" of another work. Since the objector only argued based on trademark rights and did not prove the drawing was copied, the work was deemed original and entitled to protection | https://d2.manupatra.in/ShowPDF.asp?flname=In_Re_Kangaro_Industries_28022002__Copyright_BoardCP200202051519091113COM815772.pdf | |||||||||||||||
67 | 65 | S.H.K.S. Khaden Vs. Tata Consultancy Service MANU/CP/0016/2008 | S.H.K.S. Khaden | Tata Consultancy | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Sections 19, 19A, 30, and 30A of the Copyright Act, 1957, claiming rights as the author/owner of a software module titled "INFOREX". • The Dispute: The parties had entered into a Memorandum of Understanding (MOU) in June 1996. Under this agreement, the petitioner's software was to be converted to an Oracle platform, integrated into the respondent's Banking Solutions, and sold/marketed by the respondent. • Petitioner's Claim: The petitioner argued that the MOU constituted an assignment or license of the work involving revenue sharing (Clause 7) and sought remedies under the Act regarding the assignment. • Respondent's Defense: The respondent argued the petition was not maintainable because the MOU was a "Joint Venture" contract, not a copyright assignment, and primarily, that the dispute was barred by an Arbitration Clause within the MOU | • 02 February 2006: Hearing at Puducherry where the respondent raised preliminary objections regarding maintainability and jurisdiction. • 12 November 2007: Hearing listed at Bangalore. • 24 March 2008: Hearing listed at New Delhi. • 04 July 2008: The Copyright Board delivered the final order | • Dismissal: The petition was dismissed as not maintainable. • Reasoning: The Board relied on Clause 21 of the MOU, which mandated that all disputes be settled by arbitration in Bombay. • Statutory Interpretation: The Board held that Section 5 of the Arbitration and Conciliation Act, 1996 (which restricts judicial intervention in matters governed by arbitration agreements) has an overriding effect on the provisions of the Copyright Act. Therefore, the Board was barred from adjudicating the matter. • Costs: No orders as to costs were made | • Supremacy of Arbitration Agreements: The case established that if an agreement involving copyright (such as an assignment or license) contains an arbitration clause, the Copyright Board has no jurisdiction to intervene. The provisions of the Arbitration and Conciliation Act, 1996 override the statutory remedies provided under Sections 19, 19A, 30, and 30A of the Copyright Act. • Exclusion of Copyright Board Jurisdiction: Even if a dispute relates to the terms of assignment or revenue sharing of a copyrighted work, the presence of a clause invoking the Arbitration Act precludes the Copyright Board from exercising its powers to resolve the dispute | https://d2.manupatra.in/ShowPDF.asp?flname=SHKS_Khaden_vs_Tata_Consultancy_Service_04072008__CP200811021521171665COM859361.pdf | ||||||||||||||||
68 | 66 | Jagdish Prasad Ladda Vs. K. Ganesh Nadar MANU/CP/0024/2008 | Jagdish Prasad Ladda | K. Ganesh Nadar | No. A-65654/2003 | Copyright Board at Bangalore | • Legal Basis: The petitioner filed a petition under Section 50 of the Copyright Act, 1957 seeking the expunction of the respondent’s copyright registration (No. A-65654/2003) for the artistic work "XTRA". • The Dispute: Both parties were in the trade of detergents. The petitioner claimed to be the original owner of the work, created by his employee, Mr. Akbar, in 1985. He alleged that the respondent fraudulently registered the work in 2003 while civil suits and criminal complaints regarding the trademark were already pending between them. • Specific Allegations: 1. Suppression of Facts: The respondent failed to comply with Rule 16(3) of the Copyright Rules by not serving notice to the petitioner, despite the existence of prior litigation (Suit O.S. No. 103/2001). 2. Fraudulent Certificate: The petitioner alleged the respondent obtained the mandatory Section 45 Certificate from the Registrar of Trade Marks surreptitiously, even though the petitioner's own trademark application for the same mark was pending,. 3. Contradictory User Dates: The respondent claimed different dates of user (2000 vs 1998) in copyright and trademark applications,. | • 16 August 1985: Petitioner claims creation of the artistic work by his employee. • 28 March 1998: Respondent claimed user of the mark (corrected date). • 24 July 2001: Petitioner filed Trademark Application No. 1030209. • 03 February 2003: Respondent applied for the impugned copyright registration. • 10 December 2003: Respondent obtained Copyright Registration No. A-65654/2003. • 15 January 2008: The Copyright Board delivered the final order. | • Dismissal: The petition was dismissed without going into the merits. • Reasoning: The Board held that the matter was sub judice in a higher forum. The petitioner had already filed a Writ Petition in the High Court of Andhra Pradesh challenging the validity of the Section 45 Certificate issued by the Registrar of Trade Marks and seeking the suspension of the copyright registration. • Jurisdiction: The Board expressed its inability to adjudicate issues (fraud, authorship) that were "interwoven" with the validity of the certificate currently under challenge in the High Court. • Costs: No order as to costs was made | • Hierarchy of Forums (Lis Pendens): The case reinforced that the Copyright Board will not exercise jurisdiction over a rectification petition if the validity of the underlying documents (specifically the Section 45 Search Certificate) is already being challenged in a pending Writ Petition before a High Court. • Interwoven Issues: The Board established that core issues of copyright validity (such as authorship and fraud) cannot be separated from the validity of the Section 45 certificate. If the certificate's legality is sub judice, the entire rectification process must pause, as the certificate is the foundational document for the registration | https://d2.manupatra.in/ShowPDF.asp?flname=Jagdish_Prasad_Ladda_vs_K_Ganesh_Nadar_15012008__CCP200811021521171666COM688376.pdf | |||||||||||||||
69 | 67 | Office Lovato S.P.A Vs. S.C. Rajan MANU/CP/0025/2008 | Office Lovato S.P.A | S.C. Rajan | No. A-57472/99 | Copyright Board at Bangalore | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 seeking the rectification of the Register of Copyrights to expunge the respondent’s registration (No. A-57472/99). • The Dispute: The petitioner, an Italian company pioneering in Auto Gas Conversion kits, claimed ownership of the artistic logo "LOVATO" (named after their founder), which they had published in India since 1995. • Allegation: The petitioner alleged that the respondent was not the original author and had obtained the registration by slavishly copying the petitioner's logo. The petitioner contended that the respondent's claimed publication date was later than the petitioner's actual use. | • 31 January 1995: The date the petitioner claimed first publication of the "LOVATO" logo in India. • 03 April 1997: Date of the sales bill produced by the petitioner as evidence of prior use. • 11 November 2002: The Board issued notice to the respondent, which was returned marked "Left". • 15 January 2008: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered the Registrar to expunge the entry relating to registration number A-57472/99 from the Register. • Reasoning: 1. Visual Identity: A comparison showed the respondent's work was an "exact reproduction" regarding size, thickness of letters, and the circular emblem. 2. Chronological Presumption: The petitioner produced evidence of use from 1997, whereas the respondent claimed creation in 1999. The Board held there was a "safe presumption" that the later work lacked originality and was a copy. 3. Non-Contest: The respondent failed to appear or respond to notices, and the Board emphasized the need to maintain the "purity of the register",. • Costs: No order as to costs was made | • Copyright vs. Trade Mark Comparison Rules: The Board drew a distinct line between the two laws regarding similar works: ◦ Copyright Law: Two exactly similar works can coexist if it is established that both are products of independent individual effort and labor. ◦ Trade Mark Law: The probability of simultaneous existence is "much blurred" (unlikely) even if both are original works. • Presumption of Copying based on Timeline: The decision established that if two works are identical, and one party proves earlier existence (1997) against the other's later claim (1999), the later work is presumed to lack originality absent proof of independent creation. • Duty of the Registrant: The Board noted that since copyright registrations are granted without public advertisement (unlike trademarks), it is incumbent upon registrants to "jealously guard" their registrations. Failure to update addresses or respond to notices justifying the registration can lead to expunction to protect the register's purity | https://d2.manupatra.in/ShowPDF.asp?flname=Office_Lovato_SPA_vs_SC_Rajan_15012008__Copyright_CP200811021521171667COM520548.pdf | |||||||||||||||
70 | 68 | H.T. Media Ltd. Vs. Registrar of Copyright MANU/CP/0018/2008 | H.T. Media Ltd. | Registrar of Copyright | Copyright Board at New Delhi | • Legal Basis: The appellant filed an appeal under Section 72 of the Copyright Act, 1957, challenging the decision of the Deputy Registrar of Copyrights. • The Dispute: The Deputy Registrar had refused the registration of nine artistic works. • Grounds for Refusal: The refusal was based on the calculation of time. The Deputy Registrar held that the Search Certificates issued by the Registrar of Trade Marks (required under Section 45) were submitted after 91 days, exceeding the 90-day limit stipulated in a note appended to the certificates. | • 23 July 2007: Date of the Search Certificates issued by the Trade Marks Registry. • 24 July 2007: Date of the covering letter dispatching the certificates from Mumbai. • 22 October 2007: The certificates were received by the Office of the Registrar of Copyrights. • 23 January 2008: The Deputy Registrar passed the order refusing registration due to the alleged delay. • 21 September 2008: The Copyright Board delivered the final order | • Appeal Allowed: The Board set aside the impugned order of the Deputy Registrar. • Remand: The matter was remanded back to the Registrar to decide the applications on their merits. • Reasoning: The Board found that by applying the principles of the General Clauses Act and the Limitation Act, the date of the dispatch letter (24 July) should be excluded from the count. By doing so, the submission fell exactly within the 90-day period. Furthermore, the time taken for transmission from Mumbai to Delhi should have been construed in favor of the applicant | • Calculation of Limitation (Exclusion of First Day): The Board clarified that when calculating time limits for administrative submissions, the principles of Section 9(1) of the General Clauses Act and Section 12(1) of the Limitation Act apply. Specifically, the day from which the period is reckoned must be excluded. Therefore, "hyper-sensitive counting" that includes the date of dispatch is incorrect. • No Statutory Force for "90-Day" Note: The Board ruled that the note appended to Trade Mark Search Certificates stating "This Search Certificate to be submitted... within 90 days" has no statutory force. Neither the Copyright Act/Rules nor the Trade Marks Rules prescribe this limitation or the format of such a note. • Quasi-Judicial Flexibility: The decision emphasized that the Registrar exercises quasi-judicial functions and is not strictly bound by rigid technicalities. Even if a procedural delay exists, the Registrar should draw from the principles of natural justice and exercise powers favorably to condone minor delays rather than rejecting applications on technical grounds | https://d2.manupatra.in/ShowPDF.asp?flname=HT_Media_Ltd_vs_Registrar_of_Copyright_21092008__CCP200814011519503745COM447384.pdf | ||||||||||||||||
71 | 69 | Abdullah Baeshen Vs. Paramount Trading Corpn. Pvt. Ltd. MANU/CP/0019/2008 | Abdullah Baeshen | Paramount Trading Corpn. Pvt. Ltd. | No. 52326/93 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the expunction of the respondent’s copyright registration (No. 52326/93). • The Dispute: The petitioner, an established dealer in Hukka tobacco, claimed ownership of a trademark consisting of an oval device with the alphabets "MAB" encircled therein. They alleged the respondent’s impugned artistic work was identical or deceptively similar to theirs • Specific Allegations: 1. Lack of Authorship: The petitioner argued the respondent was not an artist and could not have designed the work. 2. Breach of Agreement: The petitioner relied on a memorandum dated 29 July 1993, in which the respondent allegedly admitted the petitioner’s ownership of the "MAB" mark. 3. Procedural Violations: Non-compliance with the proviso to Section 45(1) and Rule 16 of the Copyright Rules was alleged | • 08 October 1991: Petitioner’s Trade Mark Registration (No. 559932). • 15 November 1991: Respondent's Trade Mark application (No. 562003). • 29 July 1993: Memorandum of Understanding entered into between the parties. • 01 October 1993: Date the petitioner actually filed for copyright (contradicting claims made in the 1993 agreement). • 11 August 1994: The Civil Court at Moradabad declared the 1993 agreement void and ineffective due to fraud. • 11 June 2007: The Registrar of Trade Marks treated the respondent’s trademark application as abandoned. • 21 September 2008: The Copyright Board delivered the final judgment | • Dismissal: The application for rectification was dismissed. • Reasoning: 1. Invalid Evidence: The Board rejected the petitioner's reliance on the 1993 memorandum. It accepted the respondent's evidence that a Civil Court in Moradabad had already declared that agreement void and inoperative because it was obtained through fraud and misrepresentation. 2. Failure to Substantiate: The Board found the petitioner's allegations regarding lack of originality and procedural non-compliance to be merely "averments in generalized form" without substantiating evidence. • Costs: No order as to costs was made. | • Burden of Proof: The decision reinforces that the initial burden of proof lies heavily on the petitioner in a rectification suit. Generalized allegations that a respondent "is not an artist" or "copied the work" are insufficient to expunge a registration without concrete substantiating evidence. • Impact of Civil Decrees on Copyright Evidence: The case illustrates that a document (like a settlement agreement) declared void by a Civil Court due to fraud cannot be used as a basis for claiming ownership or admission in proceedings before the Copyright Board. • Abandonment of Trademark Irrelevant to Copyright Validity: Although the petitioner proved that the respondent’s trademark application was abandoned, this fact alone was insufficient to prove that the respondent’s copyright lacked originality or was invalid | https://d2.manupatra.in/ShowPDF.asp?flname=Abdullah_Baeshen_vs_Paramount_Trading_Corpn_Pvt_LtCP200814011519503847COM733954.pdf | |||||||||||||||
72 | 70 | Som Fragrances Pvt. Ltd. Vs. Rising Sun Food Products Pvt. Ltd. MANU/CP/0020/2008 | Som Fragrances Pvt. Ltd. | Rising Sun Food Products Pvt. Ltd. | Nos. A-53804/1997 and A-53805/1997 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed two applications under Section 50 of the Copyright Act, 1957, seeking the expunction of the respondent’s copyright registrations (Nos. A-53804/1997 and A-53805/1997). • The Dispute: The petitioner, who had engaged an advertising agency to create the "POWER Gutkha Pouch" in 1994, alleged that the respondent wrongfully obtained registration for a similar work. • Core Grievance (The Certificate): The respondent obtained the mandatory clearance certificate (Form TM60) under Section 45 from the Registrar of Trade Marks (RTM) by suppressing the fact that the petitioner’s trademark applications were already pending. Upon a representation by the petitioner, the RTM reviewed the matter and cancelled the certificate previously issued to the respondent | • 08 December 1994: Deed of assignment executed by M/s Bubna Advertising Agency in favor of the petitioner for the "POWER Gutkha Pouch" work. • 19 March 1996: Petitioner applied for trademark registration of the pouch. • 15 May 1996: Respondent applied for the impugned copyright registrations. • 27 August 1997: Registrar of Trade Marks issued notice to the respondent regarding the error in the certificate. • 08 October 1997: Registrar of Trade Marks passed an order treating the Section 45 Certificate (Form TM60) as cancelled. • 21 September 2008: The Copyright Board delivered the final order | • Petitions Allowed: The Board ordered the expunction of the respondent's copyright registrations. • Reasoning: The Board held that the submission of a certificate under Section 45 is the "foundational base" of a copyright registration for works used on goods. Since the Registrar of Trade Marks had cancelled the certificate, the respondent was denuded of compliance with this mandatory statutory obligation. Therefore, the registrations could not be retained on the register. • Costs: No order as to costs was made. | • Foundational Nature of Section 45 Certificate: The case established that the clearance certificate from the Trade Marks Registry is not merely a procedural formality but a mandatory statutory obligation and the foundation of the copyright registration for artistic works on goods. • Automatic Expunction upon Certificate Cancellation: The decision clarifies that if the Trade Marks Registry cancels a Section 45 certificate (due to error or suppression of facts), the corresponding copyright registration collapses automatically because the "foundational base" is removed | https://d2.manupatra.in/ShowPDF.asp?flname=Som_Fragrances_Pvt_Ltd_vs_Rising_Sun_Food_ProductsCP200814011519503848COM299977.pdf | |||||||||||||||
73 | 71 | Wings Pharmaceuticals Pvt. Ltd. Vs. Vest Pharmaceuticals Pvt. Ltd. MANU/CP/0021/2008 | Wings Pharmaceuticals Pvt. Ltd. | Vest Pharmaceuticals Pvt. Ltd. | No. A-71862/2005 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the expunction of the respondent’s copyright registration (No. A-71862/2005). • The Dispute: The petitioner, holding a prior copyright for the artistic work 'DISCLOWIN PLUS', discovered during a civil suit that the respondent had registered a deceptively similar work. • Specific Grounds: 1. Lack of Assignment (Section 19): The respondent’s application listed the company as the applicant but Shri Vishal Gupta (a Director) as the author. The petitioner argued that no assignment deed existed transferring rights from the author to the company. 2. Lack of Originality: The petitioner alleged the respondent's work was a copy of their earlier work. 3. Procedural Violations: Non-compliance with Section 45(1) and Rule 16 was also alleged. | • 12 March 2004: Petitioner obtained Copyright Registration No. A-66727/04. • 30 April 2005: Respondent obtained the impugned Copyright Registration No. A-71862/05. • 21 September 2008: The Copyright Board delivered the final judgment. | • Petition Allowed: The Board ordered that the impugned work (Registration No. A-71862/2005) be expunged from the Register. • Reasoning: 1. Ownership Flaw: The Board held that the applicant (the Company) and the author (the Director, Shri Vishal Gupta) are distinct legal personalities. Even though the author was a Director, the company did not automatically acquire ownership. Since no assignment under Section 19 or contract of service was produced, the applicant had not lawfully acquired the rights. 2. Copying Established: The Board found the petitioner successfully demonstrated that their work served as a "model or guide" for the respondent's work, and the respondent failed to rebut this. • Costs: No order as to costs was made | • Director vs. Company (Distinct Legal Entity): The case notably established that a Director of a company is legally distinct from the Company itself regarding copyright ownership. Mere directorship does not imply that works created by the Director automatically belong to the Company; a formal assignment or proof of a contract of service is required to transfer the copyright. • Originality Test (Falk v. Donaldson): Relying on the US case Falk v. Donaldson, the Board applied the test that once a petitioner shows prima facie that their work was used as a model, the burden shifts to the respondent to demonstrate an "original artistic contribution," failing which the work is deemed a copy | https://d2.manupatra.in/ShowPDF.asp?flname=Wings_Pharmaceuticals_Pvt_Ltd_vs_Vest_PharmaceuticCP200814011519503849COM568601.pdf | |||||||||||||||
74 | 72 | Mother India International Pvt. Ltd. Vs. Registrar of Copyrights MANU/CP/0022/2008 | Mother India International Pvt. Ltd. | Registrar of Copyrights | Copyright Board at New Delhi | • Legal Basis: The appellant filed an appeal under Section 72(1) of the Copyright Act, 1957, challenging the decision of the Deputy Registrar of Copyrights regarding an application for the registration of an artistic work. • The Dispute: The Deputy Registrar rejected the appellant's application via an order dated 07 January 2007. • Specific Defect: The appellant challenged the order on merits, but the Board identified a fundamental procedural defect. The impugned order began with the phrase "I am directed to refer to your application...", implying that the decision was not made by the signatory (the Deputy Registrar) but was merely conveyed on behalf of someone else | • 21 August 2006: Date of the appellant's application for registration. • 07 January 2007: Date of the impugned order passed by the Deputy Registrar. • 21 September 2008: The Copyright Board delivered the final judgment | • Remanded: The Board remanded the case back to the Registrar for a fresh hearing and decision. • Reasoning: The Board held that the functions exercised by the Registrar (or Deputy Registrar) under Section 45 read with Section 72 are quasi-judicial in nature. A sine qua non (essential condition) of a quasi-judicial order is that the decision must flow directly from the person issuing the order. By using the words "I am directed to...", the order indicated it was dictated by another authority, rendering it invalid. | • Quasi-Judicial Independence: The case established that orders passed by the Registrar/Deputy Registrar regarding copyright registration are quasi-judicial, not merely administrative. Therefore, they must reflect the independent application of mind by the officer signing the order. • Language of Orders: The decision clarified that administrative language such as "I am directed to..." is impermissible in quasi-judicial orders under the Copyright Act. Such language implies the officer is acting as a mouthpiece for a superior, which violates the requirement that the decision-maker must be the one who heard and decided the matter. | https://d2.manupatra.in/ShowPDF.asp?flname=Mother_India_International_Pvt_Ltd_vs_Registrar_ofCP200814011519503850COM617307.pdf | ||||||||||||||||
75 | 73 | Tucker Fastners Ltd. Vs. Solsons Exports Pvt. Ltd. MANU/CP/0023/2008 | Tucker Fastners Ltd. | Solsons Exports Pvt. Ltd. | No. A-57052/99 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 seeking the expunction of the respondent’s copyright registration (No. A-57052/99). • The Dispute: The petitioner, the proprietor of the trademark 'POP' (registered since 1953), alleged that the respondent surreptitiously registered a work containing the words 'POP KEYS' and 'POP PRO' which was a mere imitation of the petitioner's mark. • Core Legal Issue (Ownership): The respondent claimed that Respondent No. 2 (Shri Chandrakant V. Solanki) created the work in 1986 and, upon joining Respondent No. 1 (the company) as Managing Director, "gave all the rights" to the company. The petitioner challenged this, arguing there was no valid assignment in writing as required under Section 19 | • 12 February 1953: Registration date of Petitioner’s trademark 'POP' (No. 157493). • 29 December 2005: Date the petition was filed by the petitioner. • 25 November 2008: The Copyright Board delivered the final judgment. | • Petition Allowed: The Board ordered the Registrar to expunge the impugned registration. • Reasoning: The Board held that Respondent No. 1 (the Company) was not the lawful owner. Although Respondent No. 2 (the individual author) became the Managing Director, there was no written assignment executed in favor of the company as mandated by Section 19. The Board rejected the respondent's verbal claim that the author "agreed and declared" the company as the owner, noting that transfer of rights must be in writing. • Costs: No order as to costs was made. | • Director vs. Company Ownership: The case clarified that an author (even if he becomes the Managing Director) and the Company are distinct entities. A Managing Director joining a company does not automatically transfer his personal copyright to the company without a formal written assignment under Section 19. • The "Two First Owners" Fallacy: The Board ruled it is a "fallacy to presume that there can be possibly two first owners" (the individual and the company) for the same work. The human author is the first owner; the corporate entity can only acquire rights via assignment. • Applicant's Burden: The decision highlighted that because the Copyright Act (unlike the Trade Marks Act) has no system for inviting opposition prior to registration, the Registrar relies entirely on the applicant's assertions. Therefore, the burden for the correctness of information (such as ownership) lies permanently on the applicant, and false claims regarding ownership transfer render the registration liable for expunction. | https://d2.manupatra.in/ShowPDF.asp?flname=Tucker_Fastners_Ltd_vs_Solsons_Exports_Pvt_Ltd_251CP200814011519503851COM378774.pdf | |||||||||||||||
76 | 74 | -Entertainment Network (India) Limited Vs. Super Cassette Industries Ltd. | Entertainment Network (India) Limited | Super Cassette Industries Ltd. | Supreme Court | • Legal Basis: The complainant (Radio Mirchi) filed a complaint under Section 31(1)(b) of the Copyright Act, 1957 seeking a compulsory license to communicate sound recordings to the public. • The Dispute: The respondent, Super Cassette Industries Ltd. (SCIL/T-Series), was not a member of the collective licensing body PPL. The complainant had broadcast the respondent's songs believing they were covered by PPL licenses but stopped after the respondent filed a suit for injunction. • The Grievance: The complainant attempted to negotiate a license, but the respondent refused to grant one unless the issue of past infringement and damages (claimed at Rs. 16.67 crores) was settled first. The complainant contended this condition was unreasonable and sought a license on terms similar to the earlier "First Licence case" (Music Broadcast v. PPL). • Respondent's Defense: The respondent argued the Board should not exercise jurisdiction because: 1. A civil suit for infringement was pending in the High Court. 2. The complainant had "unclean hands" due to past infringement. 3. Granting the license would harm the music industry and sales | • 05 June 2002: Respondent filed Suit No. 1069 of 2002 in the Delhi High Court seeking an injunction against the complainant. • 12 June 2002: Complainant gave an undertaking in the High Court to discontinue playing T-Series songs. • 19 November 2002: The Copyright Board decided the "First Licence case" (Music Broadcast v. PPL) fixing royalty rates for PPL members. • 23 May 2003: The Delhi High Court clarified that the pendency of the civil suit was not a bar for the Copyright Board to consider the compulsory license application. • 20 October 2003: The Copyright Board delivered the final order. | • Complaint Allowed: The Board directed the Registrar of Copyrights to grant a compulsory license to the complainant, Entertainment Network (India) Limited. • Terms: The license was granted for the period ending 31 October 2004. • Royalty Rates: The Board applied the same terms, conditions, and royalty rates as determined in the earlier decision Music Broadcast v. PPL (First Licence case). The Board rejected the respondent's request for additional restrictions (such as limiting plays to once a day),. • Findings on Infringement: The Board ruled that it lacked the power to pronounce on infringement or damages (which is for Civil/Criminal Courts) but held that the pending civil suit did not bar it from granting a statutory license | • "Power Coupled with a Duty": The Board interpreted the word "may" in Section 31 as a "power coupled with a duty." It established that once the statutory conditions for a compulsory license are met, the Board has no arbitrary discretion to refuse the license; it must exercise its power. • Subjectivity of "Reasonableness": The decision clarified that under Section 31(1)(b), the test for whether terms are "reasonable" is subjective to the complainant. If the complainant considers the terms (e.g., demanding huge damages before licensing) unreasonable, they have the right to approach the Board. • Rejection of "Clean Hands" Doctrine in Statutory Licensing: The Board ruled that the equitable maxim "he who comes to equity must come with clean hands" does not apply to Section 31 proceedings if the applicant is "repentant" and willing to pay. Past civil wrongs (infringement) do not disqualify an applicant from obtaining a future statutory license. • Unreasonable Pre-conditions: The Board held that refusing to grant a license until a demand for damages (specifically "double dipping" for both losses and profits) is met constitutes an "unreasonable ground" for refusal, justifying the Board's intervention. • Jurisdiction Concurrent with Courts: The case affirmed that the Copyright Board’s jurisdiction to grant compulsory licenses is independent of, and not barred by, pending infringement suits in Civil Courts | https://indiankanoon.org/doc/1592558/ | ||||||||||||||||
77 | 75 | Jupiter Match Work Vs. Kaveri Match Works MANU/CP/0014/2008 | Jupiter Match Work | Kaveri Match Works | No. A-58815/2001 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 for the rectification of the Register of Copyrights regarding the respondent's registration (No. A-58815/2001). • The Dispute: The petitioner, a proprietary firm, claimed ownership of the artistic label "HORSE" (a device of a horse standing on two legs), used since 1957. They alleged that the respondent fraudulently adopted and registered a virtually identical label titled "RED HORSE". • Specific Allegations: 1. Copying: The respondent's work was a "verbatim copy" of the petitioner's work, with the only difference being the direction the horse faced (left vs. right). 2. False Authorship: The petitioner argued that the person named as the author (S. John Joseph) could not be the author in law. 3. Procedural Delay: During the proceedings, the respondent claimed to have assigned the rights to a third party (M/s. Vinesh Traders) but failed to produce the assignment deed despite multiple undertakings | • 13 November 1963: Petitioner obtained Copyright Registration (No. A-861/63) for their label. • 08 April 1980: Petitioner registered the Trade Mark (No. 360480). • 19 February 2001: Respondent obtained the impugned Copyright Registration (No. A-58815/2001). • 06 August 2001: Date of the rectification application filed by the petitioner. • 11 November 2002: The Board issued the first notice to the respondent. • 02 February 2006: Hearing where respondent claimed assignment of rights to M/s. Vinesh Traders. • 24 March 2008: Final hearing opportunity where the respondent appeared but filed no documents; the Board closed the matter for written arguments. • 04 July 2008: The Copyright Board delivered the final order | • Petition Allowed: The Board ordered the Registrar to expunge the impugned entry (No. A-58815/2001) from the Register of Copyrights. • Reasoning: 1. Visual Identity: The Board found the respondent's portrayal of the horse to be a "verbatim copying" of the petitioner's horse. The fact that the respondent's horse faced right while the petitioner's faced left was deemed of "little significance". 2. Failure to Defend: The respondent failed to file a written statement or evidence over a period of seven years despite multiple opportunities. The Board ruled that the respondent utterly failed in their duty to defend the registration,. • Costs: No order as to costs was made. | • Duty to Defend Registration: The Board established that a copyright registrant owes a duty to society to "promptly defend his registration". Because the Copyright Act (unlike the Trade Marks Act) does not have an adversarial opposition process before registration, the Registrar relies heavily on the applicant's statements. Therefore, when challenged, the registrant has a higher obligation to be forthcoming, failing which the entry cannot remain on the register. • Copyright vs. Trade Mark Priority: The decision distinguished the two fields: ◦ In Trade Mark Law, priority of use/adoption is paramount. ◦ In Copyright Law, a later work can be valid if it is original. However, in this case, the later work was a copy, not an original creation. • Public Interest in IP Disputes: Citing the Bombay High Court in Ciba Ltd. v. M. Ramalingam, the Board reiterated that disputes over labels used on goods are contests between the public and the individual, not just between two private parties. The purity of the register protects the public from deception | https://d2.manupatra.in/ShowPDF.asp?flname=Jupiter_Match_Work_vs_Kaveri_Match_Works_04072008_CP200817031520071522COM924859.pdf | |||||||||||||||
78 | 76 | N.G. Subbaraya Shetty Vs. T.V. Venugopal MANU/CP/0002/2003 | N.G. Subbaraya Shetty | T.V. Venugopal | No. A-53813/97 | Copyright Board at Bangalore | Incense sticks | • Legal Basis: The applicants filed an application under Section 50 of the Copyright Act, 1957 for the rectification of the Register of Copyrights to expunge the respondent’s registration. • The Dispute: The applicants, manufacturers of Agarbatties (incense sticks) and owners of the trademark "EENADU" (registered/published in 1988), alleged that the respondent obtained copyright registration for an artistic label containing the word "EENADU" by suppressing material facts. • Specific Allegations: The applicants claimed prior use (since 1986) compared to the respondent's admitted use (since 1993). They argued the respondent's label was an infringement of their trademark and sought expunction based on false representation. | 1 September 1993-Respondent claimed adoption of the trademark "ASHIKA'S EENADU"; 10 September 2001-SC issued an interim order permitting the respondent to sell agarbatties using "Eenadu" outside Andhra Pradesh but restraining the use of the Telugu script or sales within Andhra Pradesh; 9 September 2003-Copyright Board delivered the final order. | • Rejection: The application for rectification was rejected. • Registration Upheld: The Board held that the respondent’s Copyright Registration (No. A-53813/97) was valid and properly registered. • Key Findings: 1. Visual Difference: The Board found the two labels to be "completely different" in colour scheme, design, and composition. The only common element was the word "EENADU". 2. Composite Work: The respondent's work was not just the word "Eenadu" but a distinctive design labelled "ASHIKA'S EENADU" featuring specific scripts and manufacturer details ("Ashika Incense Inc."), which constituted an original artistic work. 3. Failure of Proof: The applicants proved ownership of the word trademark but failed to prove that the respondent's artistic label was a copy of their label. | • Trademark Word vs. Artistic Copyright: The case clarified that owning a registered trademark in a word (e.g., "EENADU") does not automatically prevent another party from registering a copyright in an artistic label that contains that word, provided the overall layout, colour scheme, and composition are distinct and not a copy. • Navigating Sub-Judice Matters: The decision is notable for how the Board exercised jurisdiction while a related dispute was pending in the Supreme Court. ◦ The Board explicitly stated it was not deciding the property rights over the word "Eenadu" (which was before the Supreme Court). ◦ Instead, it limited its ruling strictly to the originality of the artistic carton itself, ensuring its order did not conflict with or modify the Supreme Court's interim injunction regarding the trademark usage. | https://d2.manupatra.in/ShowPDF.asp?flname=NG_Subbaraya_Shetty_vs_TV_Venugopal_09092003__CopyCP20030205152009524COM73150.pdf | ||||||||||||||
79 | 77 | Pratap Sabun Udyog Vs. Ramnagar Khadi Gramoudyog Vikar Samiti MANU/CP/0001/2009 | Pratap Sabun Udyog | Ramnagar Khadi Gramoudyog Vikar Samiti | No. A-69415/2005 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957, seeking the expunction of the respondent’s Copyright Registration No. A-69415/2005. • The Dispute: The petitioner, claiming ownership of the mark "PARAKH", alleged that the respondent was not the original owner and had copied the work. • Specific Grounds: 1. Defective Assignment: The respondent relied on a deed of assignment which only transferred rights in a trademark, not the copyright in the artistic work. 2. Procedural Violation (Rule 16(3)): The petitioner argued that the respondent was aware of the petitioner's interest due to ongoing trademark opposition proceedings but failed to serve the mandatory notice under Rule 16(3) before the copyright was registered. 3. Doubtful Clearance: The petitioner contended that the Section 45 Certificate issued by the Trade Marks Registry to the respondent was of doubtful veracity because the petitioner's identical mark had already been published in the Trade Marks Journal in 2000 | 25 October 1991-Deed of Assignment relied upon by the respondent; 8 March 2000-Petitioner's trademark application was published in the Trade Marks Journal.; 12 November 2003-Respondent filed the application for the impugned copyright registration; 8 April 2005-Respondent obtained the impugned Copyright Registration (No. A-69415/2005); 30 March 2009-Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge the entry (Registration No. A-69415/2005) from the Register of Copyrights. • Reasoning: 1. Invalid Assignment: The Board found that the assignment deed produced by the respondent related solely to the trademark "PARAKH" and contained "no whisper of artistic work or copyright". As copyright and trademarks are distinct rights, the deed failed to transfer the artistic work under Section 19 of the Act. 2. Breach of Rule 16(3): Since the respondent was aware of the petitioner's opposition (filed in 2004) before the copyright was granted (in 2005), they were under a statutory duty to serve notice to the petitioner, which they failed to do. • Costs: No order as to costs was made. | • Trademark Assignment vs. Copyright Assignment: The case clarified that a Deed of Assignment for a Trademark cannot substitute for an assignment of Copyright. The Board held that these are distinct intangible property rights, and a trademark deed that does not explicitly mention the artistic work fails to meet the requirements of Section 19 for transferring copyright. • Strict Adherence to Rule 16(3): The ruling established that if a copyright applicant becomes aware of an "interested person" (e.g., through a trademark opposition counter-statement) while their copyright application is pending, the statutory duty to serve notice under Rule 16(3) is triggered immediately. Failure to do so renders the subsequent registration liable for expunction. • Veracity of Section 45 Certificates: The Board noted that if a petitioner's trademark was already published in the Journal (in 2000), a subsequent Section 45 clearance certificate issued to a respondent (post-2003) stating there were no similar marks is facially doubtful and cannot support the respondent's case. | https://d2.manupatra.in/ShowPDF.asp?flname=Pratap_Sabun_Udyog_vs_Ramnagar_Khadi_Gramoudyog_ViCP090001COM287558.pdf | |||||||||||||||
80 | 78 | Dau Dayal Vs. Pratap Sabun Udyog MANU/CP/0002/2009 | Dau Dayal | Pratap Sabun Udyog | No. A-58902/2001 and No. A-69415/2005 | Copyright Board at New Delhi | • Legal Basis: The petitioner (Dau Dayal) filed an application under Section 50 of the Copyright Act, 1957, seeking the expunction of the respondent’s Copyright Registration No. A-58902/2001. • The Dispute: The petitioner, who held a copyright registration (No. 69415/2005) for the label "PARAKH", challenged the respondent’s registration for an identical/similar label (referred to as "PAIAKH" or "PARAKH") on grounds of lack of originality, procedural violations, and cesser of copyright. • Specific Grounds: 1. Rule 16(3): The petitioner alleged the respondent failed to give notice despite the petitioner's interest. 2. Section 15(2): The petitioner claimed the respondent's copyright had ceased to exist because the work was a design capable of registration under the Designs Act and had been reproduced more than 50 times by an industrial process | 4 August 2000-Respondent filed the application for the impugned registration; 23 February 2001-Respondent obtained the impugned Copyright Registration (No. A-58902/2001); 16 February 2002-Petitioner filed Trademark Application No. 1078627; 12 November 2003-Petitioner filed for their own copyright registration (granted as No. A-69415/2005); 30 March 2009-Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge the impugned entry (No. A-58902/2001) from the Register. • Reasoning: 1. Rejection of Petitioner's Originality/Rule 16(3) Claims: The Board found the petitioner had no standing to challenge originality because his own claim to the work (via assignment) was defective (as held in a related matter). Furthermore, Rule 16(3) was not violated because the respondent's application (2000) predated the petitioner's applications (2002/2003), so the respondent could not have known of the petitioner at the relevant time. 2. Acceptance of Section 15(2) Cesser: The Board ruled that the label applied to detergent powder constituted a "design" (features of shape, pattern, or color applied to an article) under the Designs Act, 2000. Since the respondent's sales figures (starting 1990-91) proved the article was reproduced more than 50 times by an industrial process, the copyright in the design ceased to exist under Section 15(2) | • Applicability of Section 15(2) to Labels/Packaging: The case is notable for applying Section 15(2) to what is typically considered a trademark label (detergent packaging). The Board held that the artistic work applied to an industrial product (Class 28-03 "Toilet articles" or Class 99) is a "design." If not registered under the Designs Act, copyright protection is lost after 50 industrial reproductions,. • Sales Figures as Proof of Reproduction: The Board used the respondent's own sales figures (e.g., Rs. 37 lakhs in 2006-07) as self-evident proof that the work had been reproduced more than 50 times, triggering the cessation of copyright. • Commercial Exploitation vs. Artistic Work: Relying on Microfibres, Inc. v. Girdhar and Company, the Board reinforced that if an artistic work (like a fabric design or packaging pattern) is created with the objective of industrial application and commercial exploitation, it falls under the regime of the Designs Act, not the Copyright Act. The intention of the legislature is to grant a shorter term of protection (Designs) for commercially exploited works rather than the longer Copyright term | https://d2.manupatra.in/ShowPDF.asp?flname=Dau_Dayal_vs_Pratap_Sabun_Udyog_30032009__CopyrighCP090002COM779699.pdf | |||||||||||||||
81 | 79 | D.K. Electrical of Gala No. 1 Vs. Sancheti Appliances Pvt. Ltd. MANU/CP/0003/2009 | D.K. Electrical | Sancheti Appliances Pvt. Ltd. | Nos. A-78420/2007 and A-78421/2007 | Copyright Board at New Delhi | The petitioner filed two applications under Section 50 of the Copyright Act, 1957 for the removal of the respondent’s copyright registrations regarding the artistic works "PRETTY" and "WINNER". The petitioner alleged that despite filing a civil suit against the petitioner, the respondent applied for copyright registration. | 2 August 2006-Respondent filed Civil Suit (O.S.) No. 1529 of 2006 against the petitioner. 1 January 2007: Respondent applied for the impugned copyright registration. 13 February 2007: The impugned copyright was granted to the respondent. 4 March 2009: The Copyright Board delivered the final order. | The Copyright Board ordered for the expunction of both the entries. It was obligatory for the respondent to give notice to the petitioner before filing the impugned application, to allowe the petitioner to file objections before the Registrar. | Registrar of Copyright is a quasi-judicial authority and competent enough to scan through the interests of a pirator. | https://unitedworld.co.in/wp-content/uploads/2025/11/DK_Electrical_of_Gala_No_1_vs_Sancheti_Appliances_CP090003COM406710.pdf | |||||||||||||||
82 | 80 | Devinder Kaur Vs. Brakes International MANU/CP/0006/2009 | Devinder Kaur | Brakes International | Nos. A-54595/1998 and A-57830/1999 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed two applications under Section 50 of the Copyright Act, 1957, seeking the expunction of the respondent’s copyright registrations (Nos. A-54595/1998 and A-57830/1999). • The Dispute: The petitioner alleged that the respondent obtained the registrations by concealing material particulars and claiming false authorship/originality. The core procedural grievance was the non-compliance with Rule 16(3) of the Copyright Rules, 1958. • Petitioner's Status: During the proceedings, the original petitioner (Shri Tilak Raj) passed away, and his Legal Representatives were substituted. • Respondent's Defense: The respondent argued that the petitioner had assigned the trademark and copyright (Registration No. A-4103/69) to them via an assignment deed. They further cited pending civil suits where the petitioner was injuncted from using the mark "FINEX" | • 01 September 2001: Petitioner filed the rectification applications. • 08 February 2005: The Copyright Board initially dismissed the applications on erroneous grounds. • 18 February 2008: The Delhi High Court set aside the Board's dismissal and restored the applications for hearing. • 21 January 2009: The Copyright Board delivered the final order | • Petitions Allowed: The Board ordered the Registrar to expunge the entries (Registration Nos. A-54595/1998 and A-57830/1999) from the Register. • Reasoning: ◦ Violation of Rule 16(3): The Board held that due to the three civil suits pending between the parties (filed in 1988 and 1997), the respondent was fully aware of the petitioner's interest in the subject matter. Consequently, the respondent was obligated to serve notice under Rule 16(3) at the time of applying for registration, which they failed to do. ◦ Other Grounds: Claims regarding originality and authorship were not adjudicated due to a lack of evidence from either side. • Costs: No order as to costs was made. | • Irrelevance of Who Sued Whom: The Board clarified that for the purpose of Rule 16(3) (notice to interested persons), it does not matter which party initiated the litigation. ◦ The Board stated: "In between two contesting parties, which one filed a suit against the other does not matter.". ◦ The mere existence of a suit (whether filed by the applicant or against the applicant) confirms that the applicant has notice of the other person's interest, triggering the mandatory statutory obligation to serve notice before registering a copyright. | https://d2.manupatra.in/ShowPDF.asp?flname=Devinder_Kaur__vs_Brakes_International_21012009__CCP2009090115231745144COM652575.pdf | |||||||||||||||
83 | 81 | Preeti Supari Vs. Anil Tulsani MANU/CP/0007/2009 | Preeti Supari | Anil Tulsani | Nos. A-79437/2007 to A-79450/2007 and A-79422/2007 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957, seeking the expunction of six copyright registrations (Nos. A-79437/2007 to A-79450/2007 and A-79422/2007) granted to the respondent. • The Dispute: The petitioner and respondent were involved in litigation regarding trademarks/labels such as "MIRCH MASALA", "BALLE BALLE", and "CHATAK MATAK". The petitioner alleged that the respondent obtained these registrations in violation of statutory rights by failing to disclose the dispute and serve notice as required . • Specific Grounds: 1. Violation of Rule 16(3): The petitioner argued that the respondent was aware of the petitioner's interest (evidenced by an FIR and a Civil Suit filed before the copyright application) but failed to give mandatory notice to the petitioner. 2. Ignored Objections: The petitioner had submitted letters to the Registrar of Copyrights objecting to any potential applications by the respondent, but the registrations were granted regardless. | 31 March 2007-Respondent filed an FIR (No. 78/2007) against the petitioner; 3 April 2007-Petitioner filed Civil Suit C.S. (O.S.) No. 644/2007 in the Delhi HC; 4 April 2007-Delhi HC granted an ex-parte interim injunction against respondent; 16 April 2007-Respondent filed the applications for the impugned copyright registrations; 23 April 2007-Petitioner sent eight letters to the Registrar of Copyrights; 23 May 2007- impugned Copyright Registrations were granted and certificates issued; 17 December 2007-Delhi HC vacated the injunction against the respondent; 31 March 2009-Copyright Board delivered the final order | • Petition Allowed: The Board ordered the Registrar to expunge the entries relating to all six registrations. • Reasoning: ◦ Statutory Violation (Rule 16(3)): The Board held that since the respondent had filed an FIR against the petitioner on 31 March 2007, and the High Court had issued an injunction on 4 April 2007, the respondent was fully aware of the petitioner's interest when they applied for copyright on 16 April 2007. Failing to serve notice to the petitioner was a fatal violation of Rule 16(3). • Costs: No order as to costs was made. | • Single Petition for Multiple Registrations: The Board rejected the respondent’s technical objection that separate petitions were needed for each registration. It ruled that the Copyright Board, as a quasi-judicial body, is not bound by the rigorous technicalities of the CPC. Since the parties and the subject matter were the same, a common petition was permissible to reduce litigation and costs. • FIR Proves "Interest": The case established that filing an FIR against a competitor regarding intellectual property is conclusive proof that the complainant knows the competitor is a "person interested." Consequently, applying for copyright thereafter without serving notice under Rule 16(3) renders the registration invalid. • Scope of Rule 16(3): The Board clarified that the scope of Rule 16(3) is not restricted to the literal graphics of a work but covers the "subject-matter" in a wider gamut. If there is a dispute over the broader subject matter, notice must be given. • Role of Registrar: The case highlights the administrative lapse where the Registrar granted registrations in May despite receiving specific objection letters from the petitioner in April, although the Board's decision focused primarily on the respondent's failure to serve notice | https://unitedworld.co.in/wp-content/uploads/2025/11/Preeti_Supari__vs_Anil_Tulsani_31032009__CopyrightCP2009090115231745145COM738888.pdf | |||||||||||||||
84 | 82 | Kishore Bhai N. Pithva Vs. Laxmikant Chaturbhai Sidhpura MANU/CP/0015/2009 | Kishore Bhai N. Pithva | Laxmikant Chaturbhai Sidhpura | No. A-79525/2007 | Copyright Board at New Delhi (Heard at Mumbai) | • Legal Basis: The applicant filed an application under Section 50 of the Copyright Act, 1957 seeking the expunction of the respondent’s copyright registration (No. A-79525/2007) for the artistic label "POPULAR". • The Dispute: The applicant, having applied for the trademark "POPULAR" in 2004, discovered that the respondent had obtained a copyright registration for an identical label based on a flawed clearance certificate. • Specific Grounds: 1. Invalid Clearance Certificate: The applicant argued that the Section 45(1) Certificate (TM-60) issued by the Registrar of Trade Marks to the respondent was invalid because the applicant's identical mark had already been published in the Trade Marks Journal. 2. Factual Discrepancies: The applicant highlighted inconsistencies in the respondent's claims regarding the name of the artist (receipt vs. certificate) and the date of first publication (1958 vs. 1972). 3. Section 15(2) Bar: It was argued that the work was an industrial design reproduced more than 50 times, resulting in the cessation of copyright. | 8 April 2004: Applicant filed Trademark Application No. 1277671; 3 January 2005-Applicant’s trademark application was notified in the Trade Marks Journal; 16 March 2007-Registrar of Trade Marks issued the clearance certificate (TM-60) to the respondent despite the pending applicant mark; 30 November 2009-Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge the impugned registration (No. A-79525/2007) from the Register of Copyrights. • Reasoning: 1. Unreliable Evidence: The Board found the respondent's evidence inconsistent. The artist's name on the 1958 receipt ("Pragji Bhai") did not match the author named in the certificate ("Sidhpura Laxmikant"), and the respondent failed to explain why the certificate claimed publication in 1972 if the work was used since 1958. 2. Invalid TM Certificate: The Board held that the TM-60 certificate could not be relied upon because the applicant's identical mark was already pending and published when the certificate was issued. 3. Copyright Cessation (Section 15(2)): The Board ruled that the label "POPULAR" had been used on industrial goods since 1958. As it was capable of registration under the Designs Act but was not so registered, copyright protection ceased once it was reproduced more than 50 times by an industrial process | • Application of Microfibres Doctrine: The Board extensively applied the principles from the Delhi High Court decision in Microfibres Inc v. Girdhar and Co., reinforcing that legislative intent grants lesser protection to commercial/industrial designs compared to pure artistic works. • Harmonization of Acts: The decision reiterated that if a design is capable of registration under the Designs Act but is not registered, it enjoys copyright protection only until the threshold of 50 industrial reproductions is crossed. Once crossed, all copyright protection is lost. • Burden of Proof on Discrepancies: The case established that if there are incongruities between the details in a copyright certificate (e.g., author name, year of publication) and the historical evidence produced (e.g., old receipts), the burden is strictly on the registrant to explain them. Failure to do so renders the registration liable for expunction | https://d2.manupatra.in/ShowPDF.asp?flname=Kishore_Bhai_N_Pithva_vs_Laxmikant_Chaturbhai_SidhCP200911021521171664COM379397.pdf | |||||||||||||||
85 | 83 | Rolex S.A. Vs. Rolex Sales MANU/CP/0008/2009 | Rolex S.A. | Rolex Sales | No. A-56865/99 | Copyright Board at New Delhi | watches | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 seeking the expunction of the respondent’s copyright registration (No. A-56865/99). • The Dispute: The petitioner, owner of the worldwide trademark "ROLEX" for watches, discovered that the respondent had registered a copyright for the mark "ROLEX" (claimed to mean 'Rolex Fuel Pipes'). • Specific Grounds: 1. Violation of Rule 16(3): The petitioner argued that the respondent was aware of the petitioner's interest in the mark since 1991 but failed to serve the mandatory notice when applying for registration. 2. Lack of Originality: The petitioner alleged the work was a slavish copy of their font and mark. • Respondent's Defense: The respondent raised the plea of estoppel/delay, arguing that the petitioner had known of their use since 1991 and filed the rectification petition with undue delay | 26 August 1991: Petitioner wrote to the respondent regarding infringement of the "ROLEX" mark; 11 May 1999-Respondent filed the application for the impugned copyright registration; 2 February 2005-Respondent filed a counter-statement in a separate trademark opposition; 3 April 2008-Petitioner filed the rectification application; 31 March 2009-Copyright Board delivered the final order | • Petition Allowed: The Board ordered the expunction of the impugned entry from the Register of Copyrights. • Rejection of Estoppel: The Board rejected the respondent's defense of delay. It calculated the delay from the date of knowledge (Feb 2005) to the filing (April 2008), which was only slightly over the equitable 3-year period (by two months). The Board held this small delay did not entitle the respondent to the benefit of estoppel. • Violation of Statutory Duty: The Board ruled that since the respondent received an infringement letter in 1991, they were fully aware of the petitioner's interest. Therefore, the respondent had a statutory obligation under Rule 16(3) to give notice when applying in 1999, which they failed to do. • Costs: No order as to costs was made. | • "Shall" vs. "May" (Mandatory Rectification): The Board distinguished Section 50 of the Copyright Act from Section 56 of the Trade Marks Act. ◦ Section 56 (Trade Marks): Uses "may," giving the Registrar discretion to refuse rectification based on acquiescence. ◦ Section 50 (Copyright): Uses "shall," creating a mandate. Once a case for rectification is made out, the Board must expunge the entry, significantly diluting equitable defenses like waiver or estoppel. • Limitation Period Principles: The Board clarified that while Article 137 of the Limitation Act, 1963 (3 years) does not strictly apply to the Board (as it is not a court), it serves as a "criteria for consideration" for reasonable time. A delay slightly exceeding this period (e.g., by two months) is not sufficient to bar a remedy where a statutory violation exists. • Correspondence Establishes "Interest": The decision affirms that prior correspondence (e.g., a cease and desist letter sent years before the application) conclusively proves the applicant knew of a "person interested." Failure to notify that person under Rule 16(3) in a subsequent application is a fatal statutory violation warranting expunction | https://d2.manupatra.in/ShowPDF.asp?flname=Rolex_SA_vs_Rolex_Sales_31032009__Copyright_BoardCP200914011519503743COM33053.pdf | ||||||||||||||
86 | 84 | G. Rosammal Vs. L. Chhotalal Samji Virani MANU/CP/0014/2009 | G. Rosammal | L. Chhotalal Samji Virani | No. A-83467/2008 | Copyright Board at Chennai | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957 seeking the expunction of the respondent’s copyright registration (No. A-83467/2008) for the artistic work "SUPER WITH DEVICE OF HORSE". • The Dispute: The petitioner claimed ownership of the label mark "SUPER" with a shadow device of a galloping horse, used since 2004. She alleged the respondent obtained registration for a similar work without adhering to procedural norms. • Specific Grounds: 1. Violation of Rule 16(3): The petitioner argued the respondent failed to serve mandatory notice despite knowing the petitioner was an interested party due to prior legal notices and trademark applications. 2. Contradictory Dates: The respondent claimed user since 1992 in their written statement but listed the year of publication as 2004 in the application to the Registrar. 3. Factual Errors: The application listed the languages as English and Urdu, whereas the work actually contained English and Arabic. | 5 April 2004-Date of user claimed by the petitioner; 27 December 2005-Legal notice sent by the respondent’s counsel to the petitioner; 1 August 2008-Respondent filed the application for the impugned copyright registration; 9 September 2009-impugned registration was granted and certificate issued (within just 7 weeks); 9 December 2009-Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge the registration (No. A-83467/2008). • Reasoning: 1. Violation of Rule 16(3): The Board held that the email correspondence in 2005 proved the respondent knew the petitioner had an "interest" in the subject matter. Therefore, the respondent was statutorily obligated to give notice to the petitioner when applying in 2008. 2. Conflict in User Dates: The Board found an "apparent conflict" between claiming creation in 1992 (in pleadings) and listing publication in 2004 (in the application), rendering the registration liable for expunction. • Costs: No order as to costs was made. | • Interpretation of "Person Interested": The Board clarified that even if a party sends a communication stating they "have no intention to manufacture someone else's brand," this does not mean they have foregone their right to claim an interest in the subject matter. Such a party is still entitled to notice under Rule 16(3), and failure to provide it invalidates the registration. • Scrutiny of Expedited Grants: The Board highlighted (and impliedly criticized) the speed of the administrative process, noting that the registration was granted in a mere seven weeks without proper verification of the contradictory claims made in Form IV regarding the years of creation versus publication | https://d2.manupatra.in/ShowPDF.asp?flname=G_Rosammal__vs_L_Chhotalal_Samji_Virani_09122009__CP200914011519503744COM127230.pdf | |||||||||||||||
87 | 85 | Marie Stopes International Vs. Parivar Seva Sanstha MANU/CP/0009/2009 | Marie Stopes International | Parivar Seva Sanstha | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957, seeking the expunction of 11 copyright registrations (dating from 1982 to 1989) held by the respondent. • The Dispute: The petitioner, a UK-based voluntary organization, claimed rights to the trademark "MARIE STOPES" and the "Door Device". They alleged that pursuant to a 1978 Agreement, they licensed these marks to the respondent's promoters • Specific Allegations: 1. Violation of Rule 16(3): The respondent failed to give notice to the petitioner, despite the petitioner being a "person interested" due to the prior agreement. 2. Piracy/Lack of Originality: The petitioner argued the works were pirated from their internationally reputed marks. 3. Disputed Authorship: The certificates listed individuals (Mr. P.R. Lawton, Mr. Martyn T. Young, Mrs. Sudha Tewari) as authors. The petitioner argued Mr. Lawton (who filed an affidavit for the petitioner) denied signing documents to register the marks in favor of the respondent. | 2 March 1978-alleged agreement between PSI (Petitioner’s predecessor) and the promoters of the respondent society; 22 August 1978- Memorandum of Association of the respondent society was attested; 13 March 2003-Petitioner sent a notice terminating the 1978 agreement; 27 July 2009-Copyright Board delivered the final order. | • Petition Dismissed: The Board dismissed the petition as not maintainable. • Reasoning: ◦ Sub Judice in Higher Forum: The petitioner’s case relied heavily on the validity of the Agreement dated 02 March 1978 to prove they were "persons interested" under Rule 16(3). However, the existence and validity of this very agreement were being contested in a pending suit before the Delhi High Court. ◦ Application of Precedent: Relying on the Supreme Court's decision in Whirlpool Corporation v. Registrar of Trade Marks, the Board held that when a higher forum (High Court) is seized of the core contractual issue, the lower forum (Copyright Board) should not intervene | • Limits of Board Jurisdiction (Contractual Disputes): The case reinforced that the Copyright Board will decline jurisdiction under Section 50 if the locus standi of the petitioner depends on a contract (e.g., a licensing agreement) whose validity is currently being adjudicated by a High Court. • Strict Interpretation of Corporate Ownership (Section 17): Although not the basis for the final dismissal, the Board made a significant observation regarding ownership. It noted that registrations in the name of a society/corporate body are invalid if the individual authors (even if they are Managing Directors or Members) have not executed a written assignment under Section 19, or if there is no proof that the work was created strictly in the "course of employment" under Section 17(c). Holding an office does not automatically transfer copyright to the institution without specific evidence of such obligation. | https://d2.manupatra.in/ShowPDF.asp?flname=Marie_Stopes_International_vs_Parivar_Seva_SansthaCP200917011520134991COM895389.pdf | ||||||||||||||||
88 | 86 | Charanjit Singh Vs. Dua Brothers MANU/CP/0010/2009 | Charanjit Singh | Dua Brothers | A-49566/88 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed an application under Section 50 of the Copyright Act, 1957, seeking the rectification of the Register by expunging copyright registration number A-49566/88. • The Dispute: The petitioner argued that the artistic work was created by his father, Shri Mohinder Singh, who was the first owner. The petitioner contended that there was no written assignment under Sections 18 and 19 transferring the rights from Mohinder Singh to the respondent firm (M/s. Dua Brothers). • Respondent's Defense: The respondent argued that Mohinder Singh created the work in his capacity as a partner of the firm; therefore, the copyright automatically vested in the firm as it was created in the "course of employment". • Procedural Discrepancy: The petitioner pointed out that the creator (Mohinder Singh) died on 07 December 1988, yet the registration was granted posthumously on 20 December 1988, without disclosing these facts to the Registrar | 1 April 1964-partnership deed mentioned in the proceedings; 20 December 1988-impugned Copyright Registration (No. A-49566/88) was granted; 23 July 2008-Petitioner requested certified copies from the Registrar (which were allegedly not supplied); 27 July 2009-Copyright Board delivered the final order. | • Petition Allowed: The Board ordered the Registrar to expunge the entry from the register. • Reasoning: 1. Partner is Not an Employee: The Board rejected the argument that a partner creates work in the "course of employment" for the firm. It held that Mohinder Singh created the work as an individual. Without a written assignment as required by Section 19, the firm did not acquire ownership. 2. Section 15(2) Bar: The Board held that since the work had been registered since 1988, it was safe to assume it had been reproduced more than 50 times by an industrial process. Citing Microfibres Inc. v. Girdhar and Co., the Board ruled that copyright protection had ceased under Section 15(2) of the Copyright Act. | • Partnership vs. Employment Distinction: The case clarified that a partner in a firm is not automatically considered an "employee" for the purposes of copyright ownership. Just because a partner creates a work, it does not essentially become the property of the partnership firm absent a specific agreement or evidence that creating art was their specific employment duty. • Presumption of Industrial Reproduction: The Board applied Section 15(2) based on the duration of the registration. It held that if a work has been on the register for a long period (here, since 1988) and used in commerce, "the matter needs no evidence" to conclude it has been reproduced more than 50 times, thereby extinguishing the copyright in favor of design law. | https://d2.manupatra.in/ShowPDF.asp?flname=Charanjit_Singh_vs_Dua_Brothers_27072009__CopyrighCP200917011520134992COM426599.pdf | |||||||||||||||
89 | 87 | Kusha Inc. Vs. Sachdeva & Sons Industries Pvt. Ltd. MANU/CP/0011/2009 | Kusha Inc. | Sachdeva & Sons Industries Pvt. Ltd. | Nos. A-55700/99 and A-60577/02 | Copyright Board at New Delhi | • Legal Basis: The petitioner filed two applications under Section 50 of the Copyright Act, 1957, seeking the rectification of the Register of Copyrights regarding entry numbers 55700/99 and 60577/02. • Procedural Defect: The primary point of contention raised by the respondent was a technical error in the verification of the pleadings. The respondent pointed out mistakes in the affidavits supporting the plaints, specifically regarding the dates of signature and notarization. | • 20 June 2007: Date the affidavits were signed by the applicant. • 23 June 2007: Date the affidavits were identified by counsel and notarized by the notary public (creating a discrepancy with the signature date). • 31 March 2009: Date the arguments were heard by the Board. • 12 April 2009: The Copyright Board delivered the final order. | • Dismissed (Technical Grounds): The Board dismissed both applications for rectification. • Liberty to Refile: The dismissal was not on merits but on technical grounds; thus, the Board granted the applicant liberty to file the rectification applications afresh. | • Strict Adherence to Procedural Norms (Affidavits): The case highlights the Copyright Board's strict approach to procedural technicalities regarding the verification of pleadings. • Impact of Improper Notarization: Relying on the precedent Bengal Lamps Ltd. v. Prestige Lights Ltd., the Board ruled that discrepancies between the date of the applicant's signature (20 June) and the date of notarization (23 June) rendered the application defective enough to warrant dismissal, albeit with the liberty to refile. | https://d2.manupatra.in/ShowPDF.asp?flname=Kusha_Inc_vs_Sachdeva_and_Sons_Industries_Pvt_Ltd_CP200917011520135093COM420632.pdf | |||||||||||||||
90 | 88 | -Anant Oil Industries Vs. New Nandi Seeds Corporation MANU/CP/0012/2009 | Anant Oil Industries | New Nandi Seeds Corporation | Nos. A-38386/82 and A-39169/83 | Copyright Board | • Legal Basis: The petitioner filed two applications for rectification under Section 50 of the Copyright Act, 1957, seeking the expunction of the respondent’s copyright registrations (Nos. A-38386/82 and A-39169/83). • Specific Grounds: 1. Section 45(1) Compliance: The petitioner argued the works were used on goods and required a clearance certificate from the Trade Marks Registry. 2. Lack of Assignment (Section 19): The certificates named Shri Harshad Panchal as the artist. The petitioner argued there was no written assignment transferring rights to the respondent. 3. Procedural Violations: Alleged violation of Rule 16 (failure to notify interested persons) and claims that the work lacked originality and hurt Hindu mythology. | • 09 August 1984: Date the proviso to Section 45(1) (requiring TM clearance) was inserted into the Act. • 30 November 2009: The Copyright Board delivered the final order. | • Petitions Allowed: The Board ordered the Registrar to expunge the entries from the Register. • Reasoning: 1. Rejection of Petitioner's Grounds: The Board rejected the Section 45(1) argument because the proviso was added in 1984, after the 1982/83 registrations. It also rejected the Rule 16 argument because the petitioner did not exist at the time of registration,. The ownership issue was resolved as the artist admitted receiving payment, making the respondent the first owner under the proviso to Section 17,. 2. Application of Section 15(2) (Cesser of Copyright): Despite rejecting the petitioner's main arguments, the Board held that the respondent’s own admission of massive sales (turnover of Rs. 1000 lakhs) proved the artistic labels were reproduced more than 50 times by an industrial process,. Consequently, copyright protection ceased in favor of the Designs Act,. | • Sales Figures as Self-Incrimination: The case illustrates how a respondent's defense regarding high sales turnover can backfire. By proving massive commercial use of the label on packages, the respondent inadvertently proved that the work had been reproduced more than 50 times, triggering the cessation of copyright under Section 15(2). • Non-Retrospectivity of Section 45 Proviso: The Board clarified that the requirement to obtain a Trade Mark clearance certificate (under the proviso to Section 45(1)) applies only to applications made after the amendment came into force on 09 August 1984. • Adoption of Microfibres Doctrine: The Board relied heavily on the Delhi High Court's decision in Microfibres Inc. v. Girdhar and Co., reinforcing the principle that legislative intent grants lesser protection to commercial designs compared to pure artistic works,. Once a design capable of registration is industrially reproduced 50 times, copyright protection is lost | https://d2.manupatra.in/ShowPDF.asp?flname=Anant_Oil_Industries_vs_New_Nandi_Seeds_CorporatioCP200921011520542939COM865449.pdf | |||||||||||||||
91 | 89 | M/S Phonographic Performance Limited v. M/S Lizard Lounge 2008 SCC ONLINE DEL 1191 | M/S Phonographic Performance Limited | M/S Lizard Lounge | Delhi High Court | commercial playback of sound recordings | The appellant initiated suits for copyright infringement and recovery of money against various businesses that were playing recorded music to the public without obtaining licenses from the Copyright Society | ◦ May 16, 2008: The Supreme Court ruled in the pivotal M/s. Entertainment Network (India) Ltd. case. ◦ July 2, 2008: A single Judge of the High Court initially rejected the appellant's plaints. ◦ November 3, 2008: The Division Bench of the Delhi High Court allowed the appeals and restored the suits | The High Court set aside the rejection of the plaints and restored the suits for trial, confirming that a registered Copyright Society is entitled to maintain civil actions for infringement in its own name | A registered Copyright Society "steps into the shoes of the author" as a virtual agent empowered to enforce civil remedies for the protection of rights. The Indian Contract Act, 1872 applies to these relationships, allowing owners to authorize societies to institute legal proceedings on their behalf. Section 61 of the Act does not bar a Copyright Society from suing independently when it is authorized by the owner to manage and enforce those rights | https://www.casemine.com/judgement/in/581180772713e179479a56ca# | |||||||||||||||
92 | 90 | Gramophone Company of India Ltd. v. Birendra Bahadur Pandey 1984 INSC 40 | Gramophone Company of India Ltd. | Birendra Bahadur Pandey | Supreme Court | musical records and pre-recorded cassettes | The appellant sought to prevent the transit of a consignment of suspected pirated cassettes traveling from Singapore to Nepal via an Indian port by invoking Section 53 of the Copyright Act, 1957, which allows the Registrar of Copyrights to prohibit the importation of infringing copies | February 10, 1983-The Calcutta High Court Division Bench issued its order February 21, 1984-The Supreme Court of India delivered the final judgment | The Supreme Court allowed the appeal, set aside the Division Bench judgment and restoredthe order of the Single Judge directing the Registrar of Copyrights to proceed under Section 53; no order as to costs. | The decision authoritatively clarifies that “import” under Sections 51 and 53 of the Copyright Act, 1957 includes goods merely transiting Indian territory. Consequently, Indian authorities may detain and confiscate infringing copies even when destined for a third-country market, reinforcing domestic and international protection of intellectual property without breaching transit obligations to Nepal. | https://www.casemine.com/judgement/in/5609ac14e4b014971140df8d | |||||||||||||||
93 | 91 | Novex Communications (P) Ltd. v. Dxc Technology (P) Ltd. 2021 SCC ONLINE MAD 6266 | Novex Communications (P) Ltd. | Dxc Technology (P) Ltd. | Madras High Court | sound recordings | The plaintiff filed suits for copyright infringement, permanent injunctions, and damages, alleging the defendants played copyrighted songs at in-house events without obtaining the necessary licenses or paying royalties | ◦ December 1, 2021: The date the Court reserved its orders on the preliminary issue. ◦ December 8, 2021: The date the common judgment was pronounced | Dismissed both suits and ordered the plaintiff to pay Rs. 1,00,000 in costs to each defendant because the plaintiff, as a non-copyright society, was statutorily barred under Section 33 from carrying on the business of issuing licenses | The word "only" in Section 33 mandates that any commercial enterprise engaged in the business of licensing must be routed exclusively through a registered copyright society; ensures that royalties are shared equally between owners and the original authors/composers, preventing artists from being left in penury while businesses profit from their work. Defined "business" in the copyright context as a commercial enterprise carried on for profit characterized by continuity | https://www.casemine.com/judgement/in/61b2c1fa9fca192908f76569 | |||||||||||||||
94 | 92 | Krishika Lulla and Others v. Shyam Vithalrao Devkatta and Another 2016 SCC CIV 2 119 | Krishika Lulla and Others | Shyam Vithalrao Devkatta and Another | Supreme Court | film and literary industry | The respondent filed a criminal complaint for copyright infringement under Section 63 of the Copyright Act and Sections 406 and 420 of the IPC, alleging the appellants' film title "Desi Boyz" infringed his copyright in the title of his synopsis "Desi Boys" | ◦ November 25, 2011: The appellants released the film "Desi Boyz" worldwide. ◦ March 22, 2012: The Bombay High Court refused to quash the criminal complaint against the appellants. ◦ October 15, 2015: The Supreme Court delivered the final judgment quashing the case | The Supreme Court allowed the appeals and quashed the criminal proceedings, finding that no copyright infringement had occurred. | No copyright subsists in the title of a literary work because a title is not a "work" in itself and is usually too unsubstantial to be protected. Common words like "Desi Boys" lack the originality required for protection under Section 13 of the Copyright Act. While a title cannot be protected by copyright, its owner may seek remedies through an action for passing off or under trademark law if the title is sufficiently distinctive. | https://www.casemine.com/judgement/in/5790b398e561097e45a4e464 | |||||||||||||||
95 | 93 | Exphar Sa and Another v. Eupharma Laboratories Ltd. and Another 2004 SCC 3 688 | Exphar Sa and Another | Eupharma Laboratories Ltd. and Another | Supreme Court | pharmaceutical industry | The appellants filed a suit for copyright infringement and passing off to protect the distinctive layout and design of their 'Maloxine' medicine carton after the respondents issued threats of legal action through cease and desist notices | • November 5, 1993, and May 19, 1998: The respondents issued cease and desist notices calling on the appellants to stop manufacturing preparations under the 'Maloxine' mark. • October 26, 1998: Delhi HC passed an ex-parte interim order protecting the appellants' interests. • September 28, 1999: The Single Judge confirmed the interim order regarding the use of the 'Maloxine' packaging. • February 20, 2004: The SC delivered its judgment setting aside the Division Bench's ruling on territorial jurisdiction. | The Supreme Court allowed the appeals, set aside the order returning the plaint, and remanded the matter to the Division Bench for a decision on merits while maintaining the interim order passed by the Single Judge. | The ruling reaffirms the expansive jurisdictional reach conferred by Section 62(2) of the Copyright Act and restricts appellate courts from raising unpleaded jurisdictional objections sua sponte. No new substantive precedent on copyright law is set, but the judgment clarifies procedural safeguards against improper dismissal for want of territorial jurisdiction. | https://www.casemine.com/judgement/in/5609adf7e4b0149711412a68 | |||||||||||||||
96 | 94 | Dhodha House v. S.K. Maingi 2006 SCC 9 41 | Dhodha House | S.K. Maingi | Nos. A-5117 and A-5330 | Supreme Court | food and confectionary industry | The appellant sued for infringement of copyright and trademarks, as well as passing off, alleging the respondent used deceptively similar art work, labels, and wrappers for their sweets | ◦ 1960: The appellant began using the trademark and name "Dhodha House". ◦ 1970: The appellant obtained copyright registrations for its labels and wrappers. ◦ January 17, 1992: A District Judge in Ghaziabad initially granted an injunction against the respondent. ◦ May 5, 1997: The Allahabad High Court ruled that the lower court lacked territorial jurisdiction to try the suit. ◦ December 15, 2005: The Supreme Court delivered the final judgment dismissing the appeal | The Supreme Court dismissed the appeal, affirming that the Ghaziabad court lacked territorial jurisdiction because the plaintiff did not reside there and the mere availability of goods in a market does not constitute "carrying on business" | SC separates copyright jurisdiction from trade-mark jurisdiction. Section 62(2) of the Copyright Act cannot be invoked to sue for trade-mark infringement or passing-off in a forum unconnected with those causes of action. Mere advertisement of a pending trade-mark application, without actual trade activity, does not create territorial jurisdiction. The judgment curtails forum shopping and affirms that orders passed without territorial competence are void. | https://www.casemine.com/judgement/in/5609ae1ce4b0149711412fc1 | ||||||||||||||
97 | 95 | Eastern India Motion v. Indian Performing Right Society Ltd. 1974 SCC ONLINE CAL 14 | Eastern India Motion | Indian Performing Right Society Ltd. | Calcutta High Court | cinematograph film sound tracks | The appeal was filed under Section 72(2) to challenge a Copyright Board decision that allowed IPRS to collect royalties for the public performance of music in films, with producers arguing they held exclusive ownership of all parts of their films | May 16, 1973: The Copyright Board issued its decision upholding IPRS's right to license and collect fees for music in film sound tracks. February 13, 1974: The Calcutta High Court delivered the final judgment allowing the appeal | The appeal is allowed. The court ruled that the producers of cinematograph films are the first owners of the copyright in the films including the sound tracks, and that composers who create music for the films for valuable consideration do not acquire separate copyright unless there is an express agreement to that effect. | This decision invalidates the IPRS’s claim to collect fees and royalties for public performance of musical works in film sound tracks in the absence of such agreements, requiring modification of the published tariffs accordingly. No new precedent beyond the direct effect on the parties was established. | https://www.casemine.com/judgement/in/56095f33e4b01497112c9b14 | |||||||||||||||
98 | 96 | Indian Performing Right Society Ltd. v. Sanjay Dalia and Another 2015 SCC ONLINE SC 616 | Indian Performing Right Society Ltd. | Sanjay Dalia and Another | Supreme Court | entertainment and music licensing industry | The appellant filed a suit in Delhi to prevent copyright infringement in cinema halls located in Mumbai, arguing that jurisdiction was proper in Delhi simply because the society maintained a branch office there | July 01, 2015: The date the Supreme Court of India delivered its final judgment | DISMISSED. All appeals were dismissed, thereby affirming the Delhi High Court’s decisions that it lacked territorial jurisdiction. | "additional forum" provided to authors cannot be used to harass defendants at distant, unconnected locations. The Court introduced a "rider" specifying that if a cause of action arises where the plaintiff has its principal place of business, the suit must be filed there rather than at a far-flung branch office. By applying the "mischief rule," the judgment ensures that the legal protections intended to remove impediments for authors are not abused by corporations to create "absurd inconvenience" for defendants. | https://www.casemine.com/judgement/in/5790b2ede561097e45a4e324 | |||||||||||||||
99 | 97 | K.C. Bokadia v. Dinesh Chandra Dubey 1995 SCC ONLINE MP 191 | K.C. Bokadia | Dinesh Chandra Dubey | Madhya Pradesh High Court | film and literary industries | The respondent filed a criminal complaint for copyright infringement, which the applicants sought to quash by arguing that registration under Section 45 of the Copyright Act is mandatory for a prosecution to be maintainable | September 6, 1995-Full Bench delivered the final judgment. | The Full Bench held that criminal prosecution for copyright infringement is sustainable without registration under Section 45, thereby rejecting the applicants' arguments and returning the case to the Single Judge for disposal | Copyright ownership is a consequence of authorship and exists independently of registration, which only serves as a mechanism to record existing rights. Copyright Act contains no specific provision barring legal proceedings in the absence of registration, unlike the Trade and Merchandise Marks Act or the Indian Partnership Act. Entries in the Register of Copyrights are merely prima facie evidence and do not constitute conclusive proof of copyright. Registration follows the existence of copyright and not vice versa | https://www.casemine.com/judgement/in/560978b0e4b014971133b3e1 | |||||||||||||||
100 | 98 | Associated Electronic & Electrical Industries (Bangalore) Pvt. Ltd. v. Sharp Tools 1991 SCC ONLINE KAR 58 | Associated Electronic & Electrical Industries (Bangalore) Pvt. Ltd. | Sharp Tools | No. A-25165/1979 | Karnataka High Court | electrical goods | The appellant filed an application under Section 50 of the Copyright Act seeking the cancellation of the respondent's copyright registration for "Sharp Tools," alleging it was a colourable imitation and reproduction of the appellant's prior registered artistic work "Sharp" | May 28, 1980-appellant filed for rectification before the Copyright Board; August 6, 1981: The date the Copyright Board dismissed the appellant's application; January 31, 1991-Karnataka High Court delivered the final judgment | The Court DISMISSED the appeal, upholding the Copyright Board's order refusing to cancel the respondent's copyright registration of "Sharp Tools." | The direct effect of this decision is that the respondent retains its copyright registration and right to use "Sharp Tools" as its artistic work and trade name in engineering goods. The appellant's claim of infringement was rejected on the basis that the works are distinct in artistic expression and business context. No new precedent was established; the ruling affirms existing principles regarding copyrightprotection, infringement, and the "lay observer" test. | https://www.casemine.com/judgement/in/56093adce4b014971122801f |