Lal Babu Priyadarshi and another – Appellants v. M/s. Badshan Industries and others – Respondents., Decided on 19.04.2001

Lal Babu Priyadarshi and another – Appellants v. M/s. Badshan Industries and others – Respondents.

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History

Cross Reference: 2002 AIR 33 (Patna High Court)

NLS 2002 CR/Pat.

Nagendra Rai and S. K. Katriar, JJ.

A. F. Ori. Order No. 35 of 2001, Dated 19.4.2001.

ORDER

 1. With the consent of the par­ties, this appeal was finally heard at the stage of hearing of stay matter, and is being disposed of at this stage itself.

  1. This appeal under Section 72(2) of the Copyright Act, 1957, (hereinafter re­ferred to as ‘the Act’) has been filed against the order dated 29‑9‑2000, passed by the Copyright Board (for short ‘the Board’) at Calcutta, allowing the petition filed by re­spondent No. 2 for rectification of the Copy­right Register by expunging the entry relat­ing to artistic work No. A‑J 3875/97, is­sued in favour of appellant No. 1. Proprietor of Shri Om Perfumery, having its office and business in the town of Patna.
  1. The appellants filed an appeal against the said order earlier before the High Court of Judicature at Calcutta. An objection was raised on behalf of respondents No. 1 and 2 that the appeal was not maintainable due to lack of territorial jurisdiction. The objec­tion was upheld. Thereafter, the present appeal has been filed.
  1. Appellant No. 1 is a firm and appel­lant No 2 is its Proprietor the appellants claim that they are carrying on business of manufacturing, trading and marketing in­cense sticks (Agarabatti) and related goods for the last 20 years and they are selling their incense sticks under “Ramayan” label brand. They claim that it is their artistic creation under the label of “Ramayan” and is unique in its style of writing design set­ting, colour scheme and other allied features and these have been prepared at their in­stance by a designer and photographer of Shiva Kashi and on that basis of the final artistic work was given the label of Ramayan Agarbatti. They are using the said label of Ramayan since 1981 and their product be­came very popular. Respondent No. 2, Amrit Pal Singh, was earlier selling the appellants’ products in the market up to 1995, but later on taking benefit of the goodwill of the prod­uct of the appellant and also that the prod­uct of the appellants is popular, he started manufacturing the incense sticks (Agarbatti) under the same label of Ramayan. Respond­ent No. 2 illegally adopted the label/its origi­nal design, get up, structures, letters etc. and started manufacturing, trading and marketing, its products of incense sticks using the artistic work under Ramayan la­bel. In other words, the original label and trademark of the appellants, which they have been using since 1981, are being dis­honestly used by respondent No. 1, which is a violation of the products as well as the trademark of the appellants. The appellants applied on 25‑8‑1994 before the Registrar. Trade Marks, for registration of the “Ramayan” label under the provision of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as ‘Merchandise Marks Act’). In the said application, they had given the date of user of the trademark from 1‑1‑1987. Later on they filed an application on 6‑8‑1996 for correction of the said date on the ground that there was a typographi­cal error and the actual date of user is 1‑1-­1981. The said application is still pending. Prior to that on 19‑6‑1996, the appellants sent a notice to respondent No. 2 alleging that he is using the same trade mark “Ramayan” on the Agarbatti, which is used by the appellants and by imitating their reg­istered trade mark “Ramayan” and repro­ducing the distinctive artistic features, the registered trade mark of Ramayan of the appellants is being infringed by the respond­ents. Thereafter, ‘they filed an application before the Registrar of the Copyright under the Act for registration of the copyright under Section 45 of the Act. The appellants on 8‑8‑1996 had already applied, before the Registrar, Trade Marks, for grant of no objection certificate that no trade mark iden­tical with or deceptively similar to the artistic work of the appellants has been reg­istered under the Merchandise Marks Act in favour of any other person nor any appli­cation under the Act for such registration has been made by any other person. On 20‑9‑1996, the appellants were granted no objection certificate by the Registrar, Trade Marks, and on the basis of the same, the Registrar under the Act entered the par­ticulars of the works of the appellants in the Registrar of Copyright. Thus, according to the appellants, the entry in the Register of Copyright under Section 45 of the Act was made by the Registrar of Copyright on be­ing satisfied that the artistic work on the label of Ramayan was of the appellants.
  1. The case of respondents No. 1 and 2 is that respondent No. 1, Badshah Indus­tries, situate in the town of Patna, is a proprietorship firm of respondent No. 2, Amrit Pal Singh, and is engaged in the busi­ness of manufacturing incense sticks (Agarbatti) and related goods since 1980. They have been selling their goods under the trademark Badshah Ramayan, which, has a good reputation and goodwill in the market. They are using the aforesaid label of Badshah Ramayan since 1986 on the incense sticks and the same has been in continuous use since then. The said trademark is an original work and was the re­sult of the application of the skilled labour and aesthetic sense of respondent No. 2. On 17‑6‑1996, they applied before the Reg­istrar for registration of the trademark ‘Badshah Ramayan label for incense sticks (Agarbatti) and the same is pending. The appellants started using the same Ramayan label in relation to their products with a view to harm their reputation, goodwill and caused loss to them. The appellants managed to get the artistic work of the respondents and used the identical Ramayan label of the re­spondents. They fraudulently and dishon­estly got the registration done under the provisions of the Act. The application filed for registration was not in proper form. Form IV, which has to be filed for grant of Registration of Copyright and which under its Clause 13‑A provides that if the work is an ‘artistic work’ which is used or is capa­ble of being used in relation to any goods, the application shall include a certificate from the Registrar of Trade Marks in terms of proviso to sub‑section (1) of Section 4;i of the Act, was not filled up. Thus, the ap­pellants fraudulently obtained the registra­tion under Section 45 of the Act. The appel­lants had applied before the Registrar, Trade Marks, for obtaining a non objection certificate under the Act and Search Report given to the appellants on 8‑8‑1996 from the office of the Registrar, Trade Mark, inform­ing that no objection certificate, can be is­sued in respect of the artistic work in ques­tion by the Registrar of the Trade Marks, Mumbai. A large number of applications were pending for registration by the differ­ent parties, even then the appellants man­aged to obtain a no objection certificate by playing fraud from the Trade Marks Regis­try. In view of the pendency of the applica­tions of the respondents and a large number of other persons, the appellants could not have been issued the certificate under the Merchandise Marks Act and consequently could not have been issued the no objection certificate. Respondent No. 1 after having come to know about the fraudulent activi­ties of the appellants filed Title Suit No. 236 of 1996 in the Court of the Subordi­nate Judge, Patna, on 13‑6‑1996. Thereaf­ter, on 19‑6‑1996, the appellants served a legal notice asking the respondents not to use label of Ramayan on their products. The trial Court, thereafter, on 20‑6‑1996 granted order of status quo in the aforesaid title suit. The said title suit was withdrawn on 1‑10-­1996 and a fresh title suit bearing No. 9 of 1996 was filed by the respondents against the appellants before the District Judge. Patna, on 3‑10‑1996, which is pending. When respondents No. 1 and 2 came to know that the appellants have obtained the copy­right registration certificate under Section 45 of the Act by playing a fraud and mis­representation behind their back, they filed an application under Section 50 of the Act, for rectification of the Register before the Copyright Board, New Delhi, on 4‑12‑1997. During the pendency of the application be­fore the Board, the respondents also ob­tained a Search Report from the Trade Marks Registry. In the Search Report, it was mentioned that no objection certificate as required under Section 45(1) of the Act can­not be issued by the Registrar of Trade Marks because a large number of applica­tions for registration of the very label “Ramayan” by the different parties are pending. Thereafter the said Search Report was also filed before the Board.
  1. Two grounds were urged on behalf of the respondents before the Board; firstly, that the certificate issued by the Registrar, Trade Marks, dated 20‑9‑1996 was fraudu­lently obtained as on that day, a large number of applications were pending be­fore the Registrar, Trade Marks, for regis­tration of the Trade Mark “Ramayan” and as such no certificate can be issued in such a situation and, secondly there was com­plete violation of Rule 16(3) Copyright Rules (for short the Rules’) while considering the application filed by the appellants for mak­ing entry in the Register of Copyright under Section 45 of the Act.
  1. The Board rectified the entry made in the Register of Copyright on the second ground that the registration was given in favour of the appellants without following the mandatory provision as contained un­der Rule 16(3) of the Rules.
  1. Learned counsel appearing for re­spondents No. 1 and 2 raised objection that the appeal is barred by limitation.
  1. In our view, the appeal is not barred by limitation as the order was communicated in terms of Rule 25 of the Rules on 6‑1­2000 and, thereafter, the appeal was filed within time. Hence the appeal is not barred by limitation.

 

  1. Learned counsel for the appellants submitted that as the registration was granted to the appellants under Section 45 of the Act, the respondents should have availed the remedy of appeal under Section 72 of the Act and the rectification applica­tion filed under Section 50 of the Act was not maintainable and, accordingly, the or­der passed for cancellation of registration is illegal and without jurisdiction. He further submitted that respondents No. 1 and 2 were not necessary persons to whom no­tice should have been given by the appel­lants under Rule 16(3) of the Rules and the Board wrongly held that non-compliance of the aforesaid Rule has vitiated the grant of registration to the appellants. He also sub­mitted that the appellants are the original manufacturers of the Agarbatti under the label of “Ramayan”, which is apparent from the materials on record and the Board ig­noring the same has erred in canceling the registration, which was granted in accordance with law in favour of the appellants.
  1. Learned counsel appearing for re­spondents No. 1 and 2, on the other hand, submitted that the materials on the record show that they were manufacturing the Agarbatti under the label of Ramayan since 1986, whereas, the appellants started us­ing the same lable of Ramayan having the same artistic work as that of the respond­ents from 1987, which is evident from the application filed by them for registration of the Trade Mark on 25‑8‑1994, and the no­tice dated 19‑6‑1996 served on the respond­ents. He further submitted that the Regis­trar of the Trade Marks has rejected the prayer of the appellants for grant of certifi­cate under Section 45(1) of the Act on the ground that a large number of applications are pending for grant of Trade Mark of the label of Ramayan. The subsequent grant of certificate, to the appellants was produced by fraud and as such the same should not be a ground for grant of registration under Section 45 of the Act. He further submitted that according to the statement made in the notice of the appellants dated 19‑6‑1996, sent to respondents No. 1 and 2, the dis­pute was going on between the parties with regard to the use of label “Ramayan”. The appellants asked the respondents to desist from using the label “Ramayan” on their Agarbattis, even then while making an ap­plication for effecting an entry in the Regis­ter of Copyright under Section 45(1) of the Act on 1‑10‑1996, the appellants did not give notice to the respondents and obtained the registration copyright behind the back of respondents No. 1 and 2. The respond­ents being interested in the subject matter of the Copyright, for which application was made by the appellants and there being dis­pute with regard to he right of the appel­lants the provision of Rule 16(3) of the rules should have been complied with by the appellants and the absence of no­tice by the appellants in terms of the afore­said sub‑rule is a serious lacuna and the Board has rightly held that non‑service of notice on the respondents by the appellants while making application for registration of copyright has vitiated the registration of copyright. In other words, the Board found that on mis‑representation the appellants have obtained the registration of copyright under the Act and, thus, the Board rightly passed an order in exercise of the power under Section 50 of the Act expunging the entry wrongly made in favour of the appel­lants.
  1. As stated above, the Board has not given any final opinion as to who has started manufacturing Agarbatti under the label of Ramayana earlier in point of time nor has it given a definite finding in regard to no objection certificate granted by the Registrar Marks as, to whether the same was genuinely and validly given to the ap­pellants or was fraudulently obtained as claimed by the respondents. The Board has rectified the entry of the ground of violation of Rule 16(3) of the Rules.
  1. It is an admitted position that both the parties have filed an application for grant of Trade Mark “Ramayan” claiming a similar artistic work, on the label. From a perusal of both the labels, it appears that both the marks are identical in design, scheme and the reproduction of photographs are in such a manner that an ordinary man will be deceived and it will be difficult for him to decide the difference between the two products,
  1. Both the parties have filed their ap­plications before the Registrar, Trade Marks for grant of registration of Trade Marks under label “Ramayan” and the applications are pending. Two letters, i.e. the letter dated 8‑8‑1996, sent to the appellants and the letter-dated 10‑2‑1998 sent to respondent: No. 1 and 2 from the office of the Regis­trars, Trade Marks and the list appended with the aforesaid letters clearly show that a large number of applications were pending for registration of the Trade Mark “Ramayan” and on that ground the Registrar, Trade Mark, has refused to grant certificate, both to the appellants as well as to the respondents as required under provisions of the sub‑section (1) of the Section 45 of the Act, which is a condition precedent for making an entry in the Register of Copyright. It is an admitted position that the dispute between parties with regard to carrying on business in Agarbatti under the label “Ramayan” was going prior to filing o the application by the appellants for entry in the Register of Copyright under the Act. The same is evident from two documents Respondents No. 1 and 2 filed Title Suit No. 236 of 1996 against the appellants on 13‑6‑1996, in which an order of stauts quo was granted on 20‑6‑1996. The appellants sent a legal notice dated 19‑6‑1996 to the respondents, a copy of which has been annexed as Annexure 3 to the memo of ap­peal by the appellants, wherein the appel­lants have claimed that respondents No. 1 and 2 are using identical and/or deceptively similar mark “Ramayan” on their products and called upon the respondents to forth­with withhold, cease, desist and discontinue the use of mark “Ramayan” or any other mark which is identical and/or deceptively similar to the Trade Mark “Ramayan”, con­stituting infringement on their Trade Mark. They asked the respondents to cease and desist from manufacturing and selling of incense sticks (Agarbatti). The application for entries in the Register of Copyright, as contained in Annexure 7 to the memo of ap­peal, was filed by the appellants on 1‑10­1996, i.e. after issuance of the aforesaid notice to respondents No. 1 and 2.
  1. Thus, on the date of the filing of the application there was a dispute between the appellants and respondents No. 1 and 2 with regard to use of Trade Mark or label “Ramayan” on their Agarbattis and the ap­pellants had knowledge that the respond­ents have interest in the subject matter of the copyright and they also disputed the right of the appellants.
  1. Section 44 of the Act provides that a Registrar of Copyright shall be maintained, in which the names or titles of works and the names and addresses of owners of copy­right and such other particulars may be entered into. Section 45 of the Act provides for entries in the Register of Copyright, which runs as follows –

“45, Entries in Register of Copyrights,

(1)  The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an appli­cation in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights:

Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the applica­tion shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchan­dise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name, of or that no application has been made under that Act for such registration by any person other than the applicant.

(2)  On receipt of an application in re­spect of any work under sub‑section (1), the Registrar of Copyright may, after hold­ing such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.”

  1. According to the said provision, an application has to be filed by the concerned person in prescribed form accompanied by the prescribed fee to the Registrar of Copy­right for entering particulars of the work in the Register of Copyright. In case of entry in the Register of Copyright regarding an artistic work, which, is used or capable of being used in relation to any goods, the ap­plication shall contain a statement to that effect and shall be accompanied by a cer­tificate referred to in Section 4 of the Mer­chandise Marks Act that no Trade Mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of any person or no appli­cation has been made under that Act for such registration by any officer other than the applicant. Thereafter, the Registrar af­ter making an enquiry will dispose of the matter under sub‑section (2) of Section 45 of the Act.

 

  1. Rule 16 of the Rules framed under Section 78 of the Act contains a provision with regard to filing of an application for registration of the copyright, which runs as follows –

16. Application for Registration of Copy­right. – (1) Every application for registra­tion of copyright shall be made in accord­ance with Form IV and every application for registration of changes in the particulars of copyright entered in the Registrar of Copy­rights shall be made in accordance with Form V.

(2) Every such application shall be in respect of one work only, shall be made in triplicate and shall be accompanied by the fee specified in the Second Schedule in this behalf.

(3) The person applying for registration shall give notice of his such intention to every person who claims or has any interest in the subject matter of the copyright and disputes the rights of the applicant, to it.

(4) If no objection to such registration is received by the Registrar of Copyrights within thirty days of the receipt of the ap­plication by him he shall, if satisfied about the correctness of the particulars given in the application, enter such particulars in the Register of Copyrights.

(5) If the Registrar of Copyrights receives any objections for such registration within the time, specified in sub‑rule (4) or if he is not satisfied about the correctness of the particulars given in the application, he may after holding such enquiry, as he deems fit, enter such particulars of the work in the Register of Copyright as he considers proper.

(6) The Registrar of Copyrights shall, as soon as may be, send wherever practica­ble, a copy of the entries made in the Reg­ister of Copyrights to the parties con­cerned.”

  1. The application has to be made in Form IV for registration of copyright. Clause 13‑A of the said Form provides that if the work is an ‘artistic work’, which is used or is capable of being used in relation to any goods, the application shall include a cer­tificate from the Registrar of Trade Marks in terms of proviso to sub‑section (1) of Section 45 of the Act. Rule 16(3) of the Rules provides for giving notice by the applicants to every person, who claims or has any in­terest in the subject matter of the copy­right and disputes the rights of the appli­cant.
  1. Thus, the combined reading of the aforesaid provisions shows that once an application for registration of copyright is filed and in case there are other claimants of the copyright or if there is a dispute then the person having claim or interest in the subject matter of copyright or dispute has to be noticed by the applicant and, thereaf­ter, the matter of entering in the Register of Copyright has to be disposed of as provided under Rule 16 of the Rules. In case of artis­tic work, which is used or is capable of be­ing used in relation to any goods, further requirement is that a certificate has to be obtained in terms of proviso to Section 45(1) of the Act and a statement to that effect has to be made in Form N, Clause 13‑A.
  1. Rule 16(3) of the Rules embodied the principle of natural justice, which pro­vides that when there is a rival claim with regard to subject matter of copyright then no order can be passed in favour of any party without hearing the application of other applicant or dispute. Non-observance of the said provision will vitiate the order with regard to the entry in the Register of Copyright. The said requirements cannot be waived nor non‑observance of the said pro­vision can be said to be a mere irregularity. If a person making an application under Section 45 of the Act is not aware of the rival claim then the matter would be differ­ent but in this case as is evident from the notice sent by the appellants through their counsel, they were aware of the claim of the respondents and as such they should have given notice to respondents No. 1 and 2 intimating them of their intention to file an application for registration so that the re­spondents could have raised objection and, thereafter, the matter would have been de­cided in terms of provisions contained in Section 45 of the Act, read with Rule 16 of the Rules.
  1. The appellants, as stated above, have contended that the Board should not have nullified the registration in exercise of the power under Section 50 of the Act. Re­spondents No. 1 and 2, if were aggrieved by the said order, should have gone in appeal. Section 50 of the Act provides that the Board, on an application of the Registrar of Copyright or of any person, aggrieved, shall order rectification of the Register of Copy­right either by making of an entry wrongly omitted to be made in the Register, or ex­punging of any entry wrongly made in, or remaining, on the register or the correction of any error or defect in the register. Wide power has been conferred on the Board to make necessary correction or rectification in the Register of Copyright. No limitation has been put on the power of the Board and as such in a proper case when the Board finds that the entry in the register required modification either because of any error or defect or wrong entry has been made either on the ground of fraud, misrepre­sentation or like nature, necessary correc­tion or rectification can be made in the Register of Copyright. If the submission of the appellants that a case where remedy of ap­peal against the order is available, Section 50 is not attracted, is accepted then Sec­tion 50 will become redundant and atiose. This power is in addition to the power of appeal under the Act, which has been con­ferred on the Board under Section 72(1) of the Act.
  1. Admittedly, Rule 16(3) of the Rules has not been followed in this case before making the entry in the Register of Copy­right under Section 45 of the Act and, thus, the Board rightly came to the conclusion that non observance of the provision of Rule 16(3) of the Rules, which is mandatory in nature, has vitiated the certificate of regis­tration in favour of the appellants.

 

  1. Thus, we do not find any infirmity in the order of the Board cancelling the reg­istration of the appellants in the Register of Copyright in violation of the aforesaid Rules. However, cancellation of registration does not put an end to the dispute between the parties. The appellants claim to have ob­tained certificate in terms of proviso to Sec­tion 45 of the Act, which claim has been denied by the respondents and according to them that was obtained by playing fraud. The determination of the said question is necessary for the simple reason that unless there is a certificate as provided under the proviso to Section 45(1) of the Act, granted by the Registrar, Trade Marks, no entry in the Register of Copyright can be made with regard to the artistic work in question. As the appellants have filed an application and the respondents are disputing their claim, this question is to be decided by the Regis­trar of the Copyright by holding an enquiry before passing a final order in terms of Sec­tion 45(2) of the Act. In our view, after can­celling the registration in favour of the ap­pellants, the Board should have remanded the matter to the Registrar of the Copyright with a direction to hear both the parties and then to decide the question as to whether the claim of the appellants can be allowed or not on the basis of the materials on the record.
  1. In the result, this appeal is allowed in part. The order of the Board is upheld with the modification. The matter is remit­ted to the Board to decide the claim of the appellants for entry in the Register of Copy­right after hearing both the parties in terms of the direction mentioned above.

Appeal allowed.

Cross Reference: 2002 AIR 33 (Patna High Court)

 

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