2007(35)PTC984(CB)
BEFORE THE COPYRIGHT BOARD
AT NEW DELHI
Decided On: 19.09.2007
Appellants: Vaidya
Nandram Gigraj Chamaria
Vs.
Respondent:Raj Kumar Saraf
Vs.
Respondent:
Dr.
Counsels:
For Appellant/Petitioner/Plaintiff:
For Respondents/Defendant:
Subject:
Acts/Rules/Orders:
· Copyright
Act, 1957 - Section 14(1)(b) ,
· Copyright
Act, 1957 - Section 2(ff) ,
· Copyright
Act, 1957 - Section 3 ,
· Copyright
Act, 1957 - Section 45 ,
· Copyright
Act, 1957 - Section 45(2) ,
· Copyright
Act, 1957 - Section 50 ,
· Copyright
Act, 1957 - Section 78 ;
· General
Clauses Act 1897 - Section 20 ;
· Trade
Marks Act, 1999 - Section 20 ,
· Trade
Marks Act, 1999 - Section 21
Cases Referred:
· Glaxo
Orthopedic U.K. Ltd. vs. Samrat Pharma MANU/DE/0257/1983
Citing Reference:
|
Marley Cooling Tower Co. v. Paharpur Cooling Pvt. Ltd.
|
Mentioned
|
|
British Northrop Ltd. v. Testeam Blackburn Ltd
|
Discussed
|
|
Glaxo Orthopedic U.K. Ltd. vs. Samrat Pharma MANU/DE/0257/1983
|
Mentioned
|
|
Hindustan Pencil Private Ltd. v. Universal Trading Company
|
Mentioned
|
|
Hunter v. Feldman & Co
|
Mentioned
|
|
Infabrics v. Jaytex Shirt
|
Discussed
|
|
Kickapoo Co. v. Perry Bottling Co
|
Mentioned
|
ORDER
1. This is an application
under section 50 of the Copyrights Act, 1957 for rectification of the Register
of Copyrights for expunction of an entry in the said register. According to the
petitioner, he is in the business of manufacturing and marketing of Pansarat
and Ayurvedic medicines under the name and style of M/s. Vaidya Nandram Gigraj
Chamaria since 1958 in the territory of India and since 1979 in the territory
of Delhi. He has earned tremendous goodwill in the market in relation to
manufacturing and marketing of Pansarat and Ayurvedic medicines including
"Vijay Hingoli". He is holding various registered trade marks and an
application for the registration "Vijay Hingoli" is pending
consideration before the Trade Marks Registry. He launched the product titled
Vijay Hingoli in 1981 in the territory of Delhi. The product was being marketed
in bottles and plastic packs since 1981 and he started marketing the said
product in pouches in 1991. Petitioner has also given his sale figures of the
said product since 1994-95. He submits that the respondent is fully aware of
the existence of the petitioner in the market since they are distant relations
and hail from the same village in Rajasthan. Respondent surreptitiously and
with malafide intention made an application before the Registrar of Copyrights
on 28.7.03 to register the aforementioned artistic work and get up in his name
by making some cosmetic changes therein in relation to the same product
"Vijay a Hingoli". Respondent has falsely claimed the user of the impugned
artistic work since 1995. Registrar issued the registration certificate number
A-66496/2004 on 26.2.2004. Petitioner came to know about the fact through an
advertisement given by the petitioner in a local newspaper on 24.11.2004.
Respondent has got the registration done by misleading the Registrar of
Copyrights. Petitioner in evidence has submitted as P-1 and P-2 (57 pages) in
support of his claim for necessary Ayurvedic and Sale Tax licensing and
registrations. P-3 is a copy of the label of his mark. It does not bear any
date of its creation or issuing. P-4 are the copies of the vouchers and bills
for advertisement expenditures. At serial numbers 71-73 of the annexures are
the acknowledgements dated 27.3.1996 issued by the Registrar of Trade Marks office
in favour of Ram Awatar Chamaria trading as Vaidya Nandram Gigraj Chamaria,
Tilak Bazar, Delhi. Further, it is not evident from the petitions and the
supporting evidence as to whether these applications were published in the
Trade Marks Journal. At P-5 is the copy of the artistic work of the respondent.
At P-6 is a copy of the search report of the Sales Tax authorities dated
18.10.2002 relating to the respondent. P-7 is the copy of the registration
certificate issued by the Registrar of Copyright in favour of the respondent.
P-8 is the copy of the newspaper advertisement inserted by the respondent.
2. According
to the submissions of the respondent, it is a proprietary concern of Shri Raj
Kumar Saraf. Respondent in his written statement, while controverting the
submissions of the petitioner in his rectification application, has submitted
that he had conceived, coined and authored the artistic label comprising of the
said bust, word VIJAYA, ANMOL-G and HING GOLI known as ANMOL-G VIJAY HING GOLI.
The get up, lettering style, colour scheme and placement of said features in
the said art work are in artistic manner. The said copyright is an original
artistic work within the meaning of the Copyright Act, 1957 and in order to
obtain the statutory rights, the respondent has applied for obtaining
registration which now stands registered at number A-66496/2004. Respondent is
the owner and proprietor of the said copyright and has the exclusive rights
over the same within the meaning of, inter alia, section 14(1)(b) of the said
Act. There is further descriptive narration of the business achievements of the
respondent and how he had been using the said artistic work in furtherance of
his business. He has further referred to a suit filed by him bearing number
C.S. (OS) No. 1233 of 2004 which resulted into a compromise. Respondent has
either controverted or denied all of the averments of the petitioner. Annexure
I is the copy of letter dated 15.5.93 purported to have been written by one,
Shri Manoj Kumar Aggarwal trading as M/s. M.M. Marketing Company to Sales Tax
officer which letter the respondent claims to bear the photograph of the bust
in question. Annexure II is the copy of the impugned registration and the bust
allegedly to have been conceived by the respondent. Annexure III is the copy of
the compromise suit settled
by the respondent in another matter referred to above. Annexure IV are the
trade mark registration certificates held by the respondent. Annexure V is a
copy of an affidavit sworn by Shri Shiv Kumar Aggarwal father of the
respondent, Shri Raj Kumar Saraf. Annexure VI are the copies of the newspaper
advertisements and the sale bills.
3. Learned counsel for the petitioner
argued that there is nothing to prove that the impugned artistic work was first
published by the respondent in 1995 as claimed. He drew our attention to the
provisions of section 3 of the Copyright Act, 1957 which provides as under:-
"3.
Meaning of publication. -- For the purposes of this Act,
"publication" means making a work available to the public by issue of
copies or by communicating the work to the public."
He submitted that there is
nothing in the pleadings and evidence of the respondent to indicate that the
impugned work had seen the light of the day - what to say of having been made
available to the public - till as late as 28.7.2003 when it was submitted to
the Registrar for registration and thus not necessarily made available to
public at that stage even in terms of section 3 of the Act. Use of some bust -
not necessarily the similar even - by some other person who is neither assignee
or licencee of the author upon his letter pad cannot be taken as compliance of
the provisions of section 3. He drew our attention to the acknowledgements of
his trade mark applications at p. 71 onwards of his evidence. These
acknowledgements for the registration of his label Vijay Ghamaria Hing Goli
(both in Hindi and English) are dated 27.3.1996. Three Trade Mark certificates
adduced by the respondent in evidence were issued in 2005 with effective dates of
6.12.2001 and 5.11.2002 and those too relate to different word marks having no
nexus to the impugned artistic work. In conclusion, he submitted that the
respondent has made false averments before the Registrar as to the publication
of the work being that of 1995. Learned counsel also submitted that the
respondent is in violation of proviso to sub-section (1) of section 45 of the
Act having not made necessary declaration and obtaining the certificate from
the Registrar of Trade Marks. Learned counsel referred to Hindustan Pencil
Private Ltd. v. Universal Trading Company, 1999 PTC (19) 379 ,
Kickapoo Co. v. Perry Bottling Co., 2000 PTC 477 and
Marley Cooling Tower Co. v. Paharpur Cooling Pvt. Ltd., 2000 PTC 647 .
4. Learned
counsel for the respondent, at the outset, submitted that the principles
governing the rights in the nature of copyright are different from those
governing trade mark rights. Questions of deceptive similarity, prior presence
in the market and volume of trade are more relevant in the context of trade
mark law. In the context of copyright law, originality of the work is the
touchstone of the presence of right in the author. Again, in respect of an
artistic work which is used or is capable of being used in relation to any
goods, certain specific obligations as envisaged under proviso to sub-section
(1) to section 45 get attracted. Coming to the specifics of the registration in
question, he submitted that though the registration of the impugned copyright
was done through certificate issued on 26.2.2004, the relevant year of first
publication of the work as reflected through column 9 of the certificate is
1995. He submitted that the pleas of the petitioner relating to early drug
licenses and sales tax registrations obtained by him have no relevance in the
instant matter. Petitioner's mark 'Vijay Hingoli' has no artistic features. The
only evidence bearing a date which has been produced by the petitioner is the
date of his making applications for registration of trade marks. The said date
being 27th March, 1996 is later in time to the date claimed by the respondent
as the year of publication. He drew our attention to para 2 of the written
statement where it has been claimed that as back as 1993 the artistic work was
in the process of creation at the hands of the respondent. He drew our
attention to Annexure III of the written statement where is placed the copy of
the court decree whereunder a compromise was arrived at in between the
respondent and another party in relation to a trade mark and copyright infringement
issue. Learned counsel made a broad survey of evidences produced by the
petitioner to support his claim of early presence. He deduced that all of the
bills and invoices produced by
the petitioner are post 1993. Learned counsel submitted that the necessary
declaration and the certificate obtained by the respondent from the Registrar
of Trade Marks provided under proviso to sub-section (1) of section 45 of the
Copyright Act, 1957 were submitted to the Registrar of Copyright. Petitioner is
not an interested party. Hence, there was no requirement for giving him a
notice as provided under rule 16(3) of the Copyright Rules, 1958. Learned
counsel referred to Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals,
MANU/DE/0257/1983 : AIR 1984 Delhi 265 : 1984 (4) PTC 66 (Del.) in support of
his contentions.
5. Learned counsel for the petitioner
in reply drew our attention to the copy of the letter dated 15.5.1993 on the
letter pad of M/s. M.M. Marketing Company produced by the respondent in his
evidence purported to have been written by the proprietor of the said firm to
the Sales Tax Officer which the respondent has contended bears the facsimile of
the bust in the making which ultimately resulted into the impugned artistic
mark at the hands of the respondent. The photo copy as annexed to the written
statement does not carry any impression of the facsimile supposed to have been
printed in the original. However, learned counsel produced a blank letter pad
which did carry a simple bust with no additionalities (except the word
'Rajasthani' in English written in semi-circle over the cap of the bust) as to
the product description, nomenclature as Anmol-G Hing goli (both in Hindi and
English), name and address of manufacturers, etc. available in the impugned
work as registered. Learned counsel for the petitioner contended that M.M.
Marketing is not Bindal Food Products, the petitioner. Hence, the document as
evidence has no relevance and thus of no help. He further drew our attention to
a document annexed at P-6 bearing the caption "Dealers Profile" for
M/s. Bindal Food Products with Shri Shiv Kumar Saraf as proprietor which he
argued is an extract from the records of the Sales Tax Department. It mentions
the date of the commencement of business as 18th October, 2002 and the same
date as the date of the first inter-state sale.
6. At the outset, it is necessary for
us to determine as to whether it was obligatory upon the respondent to give a
notice to the petitioner in terms of rule 16(3) of the Copyright Rules, 1958
while making an application to the Registrar for registration. Petitioner has
claimed that the proprietors on both the sides are related and hail from the
same village in Rajasthan. Further, both the parties deal in similar goods and
thus possibly having the same network of dealers whereby knowing each other's
presence in the market. We feel that these grounds by themselves are not
sufficient to conclude for us that the respondent had knowledge about the
petitioner being an interested person in the matter. With a view to proceed
further in the instant matter relating to rectification of the registration, it
is essential to determine as to the petitioner being person aggrieved in terms
of section 50 of the Act. Both the petitioner and the respondent deal in similar
goods and the impugned artistic work bears similarity to the artistic work and
trade mark of the petitioner. We feel this is enough for us to infer that the
petitioner is an aggrieved person in the matter.
7. Learned
counsel for the respondent, as stated above, has rightly submitted that the
underlying principles in relation to copyright law are different from those
relating to the trade mark law. Subject matters covered and the creators
thereof in both the areas belong to different stratum. Accordingly, the
differing modus operandi and raison d'etre therefore for registration in both
the branches of law are based upon sound principles of policy and law. Sections
20 and 21 of the Trade Marks Act, 1999 make elaborate provisions for making
public through advertisements of the trade mark applications, receiving and
hearing of oppositions thereto in a quasi-judicial manner before those
proceeding for registration. There is nothing parallel in the Copyright Act,
1957 except that section 45(2) of the said Act provides that the Registrar of
Copyright may, before entering the particulars of the work in the Register of
Copyrights, hold such inquiry as he may deem fit. Accordingly, in absence of
there being a mechanism of putting the interested or the aggrieved persons on
notice through a public notice in the form of an advertisement and thus giving
them an opportunity of filing an opposition to the proposed registration of the
work, the Registrar is
left with a situation where he has to take a note of the stated things in the
application on their face value so long there be something which does not stand
to reason on the face of it. He is more or less in the state of operating under
the doctrine of uberrima fides as applicable to the insurance contracts where
the relationship of the insurer and the insured is a relationship of utmost
good faith - insurer having issued the insurance policy on the basis of
whatever has been stated by the proponent. He has to record whatever has been
stated so long it is not something which is absurd on the face of it. In such a
state, entire burden to vouch for the truthfulness of the stated things at any
time of the existence of the registration is upon the applicant.
8. Learned counsel for the petitioner
submitted at the outset that the respondent having stated the year of first
publication as "1995" against column 9 of the Statement of
Particulars under the application for registration of copyright in Form IV has
ventured into making a blatant wrong statement since no publication of the work
in terms of section 3 of the Act had been done till 24th November, 2004 when a
caution notice was published alongwith the impugned artistic work in Sandhya
Samachar, New Delhi dated 24th November, 2004. "Publication" in any
part of the Copyright Act, 1957 is to be understood in terms of its definition
given in section 3 of the Act as referred to above. Form IV is a form
prescribed under rule 16 of the Copyright Rules, 1958 which rules have been
framed under section 78 of the Copyright Act, 1957. Section 20 of the General
Clauses Act, 1897 provides as under:-
"Where
by any Central Act or Regulation, a power to issue any notification, order,
scheme, rule, form or bye-law is conferred, then expressions used in the
notification, order, scheme, rule, form or bye-law, if it is made after the
commencement of this Act, shall, unless there is anything repugnant in the
subject or context, have the same respective meanings as in the Act or
Regulation conferring the power."
In view of the above,
"publication" in column 9 of the Statement of Particulars of Form IV
is to be understood as provided in section 3 of the Act.
"Publication", as provided in section 3, is targeted at making
availability of the work to the public. The availability of the work can either
be done by issuing the copies or communicating the same to the public. Section
2(ff) of the Act provides the definition of "communication to the
public" as under:-
"communication to the
public" means making any work available for being seen or heard or
otherwise enjoyed by the public directly or by any means of display or
diffusion other than by issuing copies of such work regardless of whether any
member of the public actually sees, hears or otherwise enjoys the work so made
available.
Explanation. -- For the purposes
of this clause, communication through satellite or cable or any other means of
simultaneous communication to more than one household or place of residence
including residential rooms of any hotel or hostel shall be deemed to be
communication to the public".
9. Article 3(3) of the Berne convention
for the Protection of Literary and Artistic Works (Paris Act, 1971) provides as
under:-
"The
expression 'published works' means works published with the consent of their
authors, whatever may be the means of manufacture of the copies, provided that
the availability of such copies has been such as to satisfy the reasonable
requirements of the public, having regard to the nature of the work....."
10. It shall be instructive to look into
the judicial findings in this score in certain English cases. House of Lords,
per Lord Scarman, in Infabrics v. Jaytex Shirt, (1981) 1 All ER 1057 ,
while dealing with the meaning of publication under section 49(2)(c)
of the U.K. Act of 1956, observed as under:-
"When
construing words and phrases in an Act dealing with a subject as complex and
varied as copyright, it is perilous, in the absence of clear guidance in the
Act, to assume that in respect of every element or aspect of the
subject ordinary English words, which have many applications, are used
consistently to express only one particular application. That they should be
construed as bearing the same generic meaning I accept. Publish is to make
public (emphasis provided by us). This meaning the words 'publish',
'publishing', 'publication' will always have....".
In another case (British
Northrop Ltd. v. Testeam Blackburn Ltd., (1974) RPC 57 at pp. 67, 68 ),
J Megarry in the Chancery Division elaborating "issued to the
public", put reliance upon the following observations in Francis, Day and
Hunter v. Feldman & Co., (1914) 2 Ch. 728 :-
"Issued
to the public' can mean no more than an invitation or a right to the public to
acquire copies. Notice of the publication is given to the public by the copies
sent to the British Museum and to the universities. I do not say that that
satisfies the Statute. I think it does not, but 'issued to the public' can mean
no more than having them on sale. You need not advertise and you need not call
the attention of the public to the fact that you have published, if you are
prepared to supply on demand. Here, the moment there came a demand they fully
satisfied it."
11. In the
instant case, under column 9, year for first publication has been claimed as
1995. The earliest document adduced in evidence relates to 1993. It is a letter
dated 15.5.1993 written by the Proprietor of M/s. M.M. Marketing Company on the
printed letter pad of the firm to the Sales Tax Officer, Ward No. 083, Bikrikar
Bhawan requesting for an extension of period for to complete the requirements
of some registration. Respondent in his written statement has submitted that he
had authored/conceived portrait of bust of human being having small moustache
on the face, bearing spectacle on eyes and wearing cap on the head in 1993 and
had allowed his brother Shri Manoj Kumar Aggarwal, then trading as M/s. M.M.
Market Company to use the said bust on the letter head and promotional
materials of M/s. M.M. Marketing Company. He has also produced an affidavit of
Shri Manoj Kumar Aggarwal in this regard. There is no primary evidence to
substantiate his authorship of this work. Photo copy of the letter pad annexed
as evidence does not make out any figure of the bust printed thereupon. It may
be because of the reason of poor photo copying. Learned counsel submitted a
blank original letter pad of the firm depicting the bust. A quick and cursory
glance of the bust leads to unquestionable conclusion that it is not what is
appended to the application for registration on 28.7.2003. Respondent himself
has submitted in para 3 of his Written statement that he conceived, coined and
authored the artistic label in 1995. In view of that anything relatable to 1993
has no meaning. Again, in terms of section 3 of the Act, the work is to be made
public. Inscription of some mark which bears no similarity to the impugned
artistic work on the letter pad of a third person indicating no authorship of
the work is no publication in terms of the provisions of the Act. Application
dated 10.6.2003 was received on 28.7.2003 in the office of the Registrar and
registration certificate therefor bearing number A-66496/2004 was issued on
26.2.2004; Since there is no requirement under the Act to give a public notice
conveying the fact of having filed the application or inviting objections thereto,
it can safely be deduced that the requirement in the nature of compliance of
the requirements of section 3 of the Act in either making work available to the
public by issuing copies or by communicating the work to the public cannot be
presumed to have been complied with on any of three aforementioned dates. C.S.
(O.S.) No. 1233 of 2004 filed in the High Court of Delhi by the respondent
against M/s. G.K. Product which resulted into a settlement again relates to
2004 and there is nothing in the petition which helps us to deduce that the
publication of the artistic work had been done in 1995. Respondent filed an
application for registration of word VIJAYA per se as trade mark on 5.11.2002
which application was advertised in the Trade Marks Journal MEGA6 dated
25.11.2003. Accordingly Trade Mark No. 1148151 effective from 5.11.2002 was
issued on 5.3.2005. This again is an application for the word VIJAYA per se
having no proximity to the impugned artistic work. Again, this being in 2002 is
of no help to subscribe to the fact of publication of the impugned artistic
work in 1995; Respondent has submitted number of bill copies (all relatable to
years 2002 to 2004) evidencing the sale of his products including
Anmol Vijaya Hing Goli. For reasons stated earlier, these bills are of no help
in proving the fact of the publication of the artistic work in 1995. Respondent
has submitted three copies of newspaper advertisements relatable to the
impugned artistic work. Shanivarta, Punjab Kesri, Delhi dated 8.5.2004 and Somvarta,
Punjab Kesri, Delhi dated 10.5.2004 carry advertisements for the products of
the respondent bearing the impugned artistic work. Sandhya Times, New Delhi
dated 24.11.2004 carries a CAUTION NOTICE from the respondent about his trade
mark and the impugned artistic work. Again, these advertisements which though
strictly in accord with the requirements of section 3 making available the work
to the public or communicating the work to the public do not help the
respondent being much belated in time to prove an event having taken place in
1995.
12. Maintenance of the purity of the
register is the hall mark of the registrations relating to intellectual
property rights. In a situation, where registration is to be given effect to
simply on the basis of the facts stated by the applicant Without insisting for
any evidence at the time of registration in support of the facts stated, heavy
burden is cast upon the applicant while stating the facts which he should be
able to support by adducing the necessary evidence at any later date when he is
called upon to substantiate the same. We feel that the respondent has miserably
failed in this regard. In view of the above, we hold that the Register of
Copyrights shall be rectified by expunging the entry bearing number
A-66496/2004. No orders as to costs.
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