Bombay Metals (P) Limited Vs. Tara Singh

Head Note of the Case

Delhi High Court, in a rectification petition under Section 50 of the Copyright Act, 1957, expunged two copyright registrations (A-85865/2009 and A-85866/2009) granted to the respondent for artistic works on packaging/labels of “Ball Head Racers” bicycle parts. The Court held that the impugned artistic works were not “original” within the meaning of Section 13(1)(a) read with Section 2(c) of the Act because they were colourable imitations and substantial reproductions of the petitioner’s earlier registered artistic works in packaging. The judgment reiterates that copyright protection for labels/packaging as artistic works requires originality; mere trade-dress elements or colour schemes cannot be monopolised if generic, but when the overall get-up, layout, colour scheme, placement of logo, typography and arrangement create a deceptive similarity, the later work lacks originality and infringes the prior copyright. The Court applied the “broad and essential features” test (not microscopic side-by-side comparison) and relied on prior permanent injunction granted in a civil suit between the same parties to hold the respondent’s adoption dishonest. The petitioner, being a registered copyright owner and a trade rival, was held to be a “person aggrieved” competent to maintain the rectification petition. The ruling underscores that copyright search certificates under Section 45 are not conclusive and that a registration obtained in violation of the Act or by suppressing pending litigation is liable to be expunged.

Introduction

This is a landmark rectification proceeding under the Copyright Act, 1957 concerning artistic copyright in commercial packaging/labels used for bicycle components (specifically “Ball Head Racer” parts). The petitioner, a long-standing manufacturer, sought removal of two copyright entries granted to a trade rival on the ground that the rival’s packaging was a slavish imitation of the petitioner’s earlier copyrighted designs. The judgment, delivered on 28 March 2026 by Justice Tejas Karia of the Delhi High Court, is significant because it clarifies the interplay between copyright originality, substantial similarity in labels, and the High Court’s rectification jurisdiction under Section 50. It also demonstrates how a prior civil suit decree of permanent injunction can influence copyright rectification.

Factual Background

The petitioner, Bombay Metals (P) Limited, manufactures and markets bicycle parts under distinctive trade dress/packaging featuring specific colour combinations, layout, arrangement of features and get-up. One of its products is “Ball Head Racer”. The petitioner is the registered owner of four copyrights in its packaging designs:

A-11138/74 – BM Screw Racer Packaging (red variant shown in judgment);

A-55236/98 – BM Ball Head Racer Packaging (red);

A-55238/98 – BM Ball Head Racer Packaging (black);

A-55214/98 – BM Screw Racer Packaging (green/teal).

The respondent No. 1 (Tara Singh, proprietor of R.S. Industries) was engaged in the same business. In January 2002 the petitioner discovered that the respondent was using packaging that was a colourable imitation of the petitioner’s designs. This led to Civil Suit No. 127/2002 filed before the Delhi High Court seeking injunction. An interim injunction was granted on 12.02.2002 restraining the respondent from using deceptively similar packaging. The respondent was found to have violated the injunction, leading to four contempt petitions (CCP 169/2002, CCP 13/2004, CCP 122/2005 and I.A. 12504/2006).

In 2002-03 the respondent obtained copyright search certificates (CC 2470/2002-03 etc.) under Section 45(1) of the Act claiming no similar artistic work existed. The petitioner challenged those certificates in WP(C) No. 1604/2004; the High Court quashed them on 02.12.2008 and directed the respondent to disclose the pendency of the civil suit while applying for any copyright registration. The respondent allegedly did not comply. Later, the respondent obtained the impugned registrations A-85865/2009 and A-85866/2009 for its orange/red and blue packaging variants of “Ball Head Racers”. These registrations are the subject matter of the present rectification petition.

Procedural Background

The rectification petition was originally filed before the Copyright Board, Delhi. Pursuant to legislative changes and jurisdictional shifts, it was transferred to the Calcutta High Court and finally to the Delhi High Court by an order dated 18.07.2024 passed by the Supreme Court in Transfer Petition (C) No. 465/2024. The matter was heard as C.O.(COMM.IPD-CR) 17/2024 in the Intellectual Property Division of the Delhi High Court.

Dispute in Question

Whether the two impugned copyright registrations (A-85865/2009 and A-85866/2009) were wrongly made and liable to be rectified/expunged from the Register of Copyright under Section 50 of the Copyright Act, 1957 on the grounds that (i) the artistic works lack originality, (ii) they are substantial reproductions of the petitioner’s earlier copyrighted packaging, and (iii) the registrations were obtained in violation of statutory provisions and court orders.

Arguments of Parties

Petitioner’s Arguments:

The impugned registrations violate Section 45 because a proper search would have revealed the petitioner’s earlier copyrights.

Artistic works must be “original” under Section 13(1)(a); the respondent’s packaging is a colourable and slavish imitation and therefore not original.

The respondent’s adoption is dishonest and mala fide, intended to misappropriate the petitioner’s goodwill.

The prior civil suit and permanent injunction decree dated 27.09.2016 conclusively establish infringement.

The petitioner is a “person aggrieved” entitled to seek rectification.

Respondents’ Arguments (Nos. 1A & 1B):

The titles are completely different (“BM LIMITED” vs “RAJIS QUALITY AND QUANTITY”) and there is no visual, structural or phonetic similarity.

The get-up and trade dress are not slavish imitations; the petitioner is merely picking isolated generic features (colour).

Colours are common to the trade and cannot be monopolised.

The petitioner cannot dissect the label to create a claim of infringement.

The petition deserves to be dismissed.

Reasoning of the Judge (including different provisions of law and their context)

Justice Tejas Karia first established jurisdiction and locus standi. Section 50 of the Copyright Act empowers the High Court to rectify the Register if an entry is made “wrongly” or “wrongly remains” on the Register. The provision is in the nature of a summary rectification power analogous to trade-mark rectification under Section 57 of the Trade Marks Act. Any “person aggrieved” can invoke it. The Court held the petitioner is a person aggrieved because (i) it holds prior registered copyrights in identical subject-matter, and (ii) both parties are competitors in the bicycle-parts market; continued existence of the impugned registrations would dilute the petitioner’s statutory copyright and goodwill.

The core legal concept clarified is originality of artistic works. Under Section 13(1)(a), copyright subsists in “original artistic works”. Section 2(c) defines “artistic work” to include any “drawing, painting, … or any other work of artistic craftsmanship” and, importantly for commercial labels, the arrangement of letters, colours, layout and get-up can qualify if the overall expression is original. Originality in Indian copyright law does not require novelty or invention; it requires that the work should not be a mere copy and should involve the exercise of skill, labour and judgment (though the threshold is low). However, when a work is a colourable imitation or substantial reproduction of an earlier work, it fails the originality test and also infringes the prior copyright under Section 51.

The Judge applied the test of substantial similarity laid down by the Supreme Court in Parle Products (P) Ltd. v. J.P. & Co. (1972) 1 SCC 618 (originally for passing-off but held equally applicable to copyright in labels). The test is: compare the broad and essential features of the two works, not by placing them side-by-side for microscopic differences, but from the viewpoint of an average purchaser with imperfect recollection. If the overall impression is such that one is likely to be mistaken for the other, there is substantial reproduction.

The Court then conducted a detailed visual comparison (paras 19-21 of the judgment) and found:

Identical colour schemes (red/blue variants);

Circular logo placed centrally in white-and-blue or white-and-red;

Trade name in white letters on coloured background;

Product name “BALL HEAD RACERS” in identical position and font style;

Side panels with identical wording and placement (“BALL HEAD RACER” and “10 SET OF THREE”).

These elements created an overall deceptive similarity. The respondent’s argument of “different titles” was rejected because title is only one element; the get-up as a whole was copied.

The Judge also noted the respondent’s past conduct (violation of injunction, suppression of litigation) rendered the adoption mala fide, reinforcing lack of originality.

Judgements relied upon by the Judge and their context

Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488 (Delhi High Court) – Directly applied. The Court quoted para 6 of Marico at length. In Marico, two coconut-oil labels were compared; the Court held that colour scheme, arrangement of coconut tree and broken coconuts were substantially similar even though brand names differed. The judgment clarified that the Parle Products test applies equally to copyright infringement actions involving artistic works/labels.

Parle Products P. Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618 (Supreme Court) – The foundational authority quoted verbatim in Marico and adopted in the present case. It laid down the “not side-by-side” rule and the “average purchaser with imperfect recollection” standard. Though originally a passing-off case, the Delhi High Court held the similarity test identical for copyright because both turn on deceptive similarity of artistic expression.

No other judgments were cited; the Court relied heavily on these two precedents to crystallise the legal position on label copyright.

Final Decision

The petition was allowed. Copyright Registrations Nos. A-85865/2009 and A-85866/2009 were cancelled and expunged from the Register of Copyright. The Registry was directed to communicate the order to the Controller General of Patents, Designs and Trade Marks within four weeks for necessary updation on the official website.

Concluding Note

The judgment is a textbook illustration of how Indian courts protect copyright in commercial packaging while preventing monopolisation of generic trade-dress elements. By emphasising the “broad features” test and linking copyright originality with the absence of copying, the Court has sent a strong message that dishonest copying of a competitor’s label design will not be rewarded with statutory copyright protection. The decision also reinforces the High Court’s supervisory role over the copyright register under Section 50, making it an effective remedy against wrongly granted registrations.

Legal Point Settled in this Case (with clear explanation of legal concepts)

The judgment settles the following propositions:

Originality in label/packaging copyright: A later artistic work (label) is not “original” under Section 13(1)(a) if it is a colourable imitation or substantial reproduction of an earlier copyrighted label, even if minor changes (different brand name) are made. The test is not identity but overall deceptive similarity judged by broad essential features.

Application of Parle Products test to copyright: The Supreme Court’s passing-off similarity test in Parle Products is equally applicable to determine substantial reproduction in copyright suits involving artistic works. Courts must adopt the viewpoint of the average consumer, not an expert comparing labels side-by-side.

Person aggrieved under Section 50: A prior copyright owner who is also a trade rival is a person aggrieved if the continued registration of an infringing work would dilute its statutory rights and goodwill.

Section 45 search certificates are not conclusive: Obtaining a “no similar work” certificate does not validate a subsequent registration if the work is in fact copied; the certificate can be challenged and the registration expunged.

Prior civil decree as evidence: A permanent injunction decree in a civil suit between the same parties conclusively establishes infringement and can be relied upon in the rectification proceeding to show lack of originality and mala fides.

These principles provide clear guidance to manufacturers, copyright registries and practitioners on the protectability of packaging designs and the scope of rectification proceedings.

Case Detail

Title: Bombay Metals (P) Limited Vs. Tara Singh Prop. R.S. Industries (Regd) and Anr

Date of Order: 28 March 2026

Case Number: C.O.(COMM.IPD-CR) 17/2024

Neutral Citation: Not assigned in the judgment (as on date of delivery)

Name of Court: High Court of Delhi at New Delhi

Name of Hon’ble Judge: Hon’ble Mr. Justice Tejas Karia

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