KRISHNAKUMAR
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$~14
*
IN THE
HIGH COURT OF DELHI AT NEW DELHI
+
Date of decision: 15th October, 2020 W.P.(C) 1295/2020 & CM APPLs.
4498/2020, 21470/2020
H S SAHNI
Through:
.....
Petitioner
Mr. S.K. Bansal & Mr. Ajay
Amitabh
Suman, Advocates (M-9990389539).
versus
UNION OF INDIA AND ORS.
..... Respondents
Through: Ms. Biji Rajesh, Advocate for Mr. Gaurang Kanth, CGSC for R-1 to 3. Mr.
Saif Khan, Mr. Akshay Agarwal, Mr. Achuthan Sreekumar & Mr. Junaid Alam,
Advocates for R-4.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.
This hearing has been done by video conferencing.
2.
The present petition has been
filed by Mr. H.S. Sahni trading as M/s M.K. Auto Sales Corporation challenging
the copyright registration bearing no. A-106276/2013, granted in favour of
Respondent No.4 - M/s M.G. Cables (India) – a partnership firm.
3.
The grievance of the Petitioner
is that the label is an artistic work which also has a trademark and hence
required a No Objection Certificate from the Trademark Registry under Section
45(1) of the Trade Marks Act, 1999. Mr. Bansal, ld. counsel appearing for the
Petitioner submits that there are two search reports issued by the Trademark
Registry, one in 2012 and one in 2016. According to him, owing to the fact that
there are two search reports issued, the certificate of registration issued in
2013, which is based
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on the first search report, is completely invalid and the copyright
registration is liable to be quashed. He further submits that it is quite
strange that the Trademark Registry has issued two search reports dated 6th December, 2012 and 30th September, 2016 and if the
latter search report is deemed to be correct then the copyright certificate is
not tenable in law as the registration could not have been granted prior to the
search report being issued.
4.
In view of these contentions the
Court had summoned the original copyright registration file and called for an
affidavit from the Registrar of Trademarks in this regard.
5.
The original record has been
received today by the Court and the same has been perused. A perusal of the
original record shows that the file has only two main documents, apart from the
copies of the applications and related forms etc.,. The covering letter to the
original Search certificate that
is on record is dated 6th December, 2012 with the despatch
no. TMR-D/CC/16274 dated 6th December, 2012. The search certificate is also dated
6th December, 2012. The label in respect of which the search certificate
has been issued is attached to the certificate and also has a seal. A perusal
of the original records also reveals that the red seal is torn from the edges,
however, the manner in which it is torn, shows that the label was part of the
said search certificate. In fact, the tear marks on the label are also visible
to
the Court. Thus, insofar as the search certificate dated 6th December, 2012 is concerned, the
same appears to have been the basis of the grant of copyright registration no.
A-106276/2013 dated 5th October, 2013.
6.
Insofar as the 2016 search
certificate, a copy of which has been placed on record is concerned, no such
search certificate exists on the original record. According to Mr. Bansal, ld.
counsel, an RTI application was filed
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with the Trademarks Registry to confirm as to which
is the correct search certificate. The reply to the RTI dated 16th January, 2020 simply transmits
the information in the Form TM-60 dated 8th September, 2012, an M.G. Cables label, a letter by M/s Lalji Advocates
dated 15th October, 2012– the trademark agent and the search report dated 13th October, 2012 as also the search
certificate dated 30th September, 2016. The search certificate dated 6th December, 2012 is not
transmitted and hence the Petitioner suspects that it is the 2016 search
certificate which is valid and not the 2012 search certificate.
7.
In order to assuage these
concerns and to confirm the actual facts, the original record is perused. As
far as the original record is concerned, the
search certificate dated 6th December, 2012 exists on the record and the same appears to have been
the basis of the copyright registration certificate.
8.
Insofar as the 2016 certificate
is concerned, the same is not produced as a part of the original record. This
Court does not wish to arrive at any conclusion as to whether the 2016 search
certificate in fact exists or not. Ms. Biji Rajesh, ld. counsel appearing for
Mr. Gaurang Kanth, ld. CGSC who represents the Trademarks Registry, submits
that in 2016, a second search certificate was issued under the presumption that
the original request was still pending. There is also an infringement
proceeding which is pending between the parties. The purport and effect of the
2016 search certificate need not be gone into inasmuch as such a certificate
does not exist on the record produced before this Court. The Court is satisfied
that the original file which has been produced shows that the 2013 copyright
certificate is based on the 2012 search certificate.
9.
The question whether the search
certificate has been rightly issued or not in view of any conflicting claims of
either party, is also not an issue
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which this Court is going into and the same would
depend on various other factors including prior registration and prior use
etc., All issues on merits are left open. The Petitioner’s remedies, if any, in
respect of the copyright registration certificate dated 5th October, 2013 are also left
open.
10.
With these observations, the writ
petition is disposed of. All pending applications are also disposed of.
11.
The scanned copy of the original
file be retained on record and the original file be returned to the ld. counsel
for the UOI/TMR.
PRATHIBA M. SINGH, J.
OCTOBER 15, 2020
Rahul/T
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