Facts of the Case:
The petitioner, Apex Laboratories Private Limited, filed a petition under Section 50 of the Copyright Act, 1957, seeking rectification of the Register of Copyrights by expunging the copyright registration No.A-90270/2011, dated 29.03.2011, granted to the second respondent for the artistic work “ZINCOVIT WITH FRUITS DEVICE LABEL.” The petitioner claimed prior use of the ZINCOVIT trademark since 1988 and copyright registration of its label since 1997. The second respondent had entered into an agreement with the petitioner in 2007 for manufacturing ZINCOVIT SYRUP, but after the agreement was terminated in 2009, the second respondent obtained a copyright registration for a substantially similar label.
Issues:
1. Whether the second respondent's copyright registration for ZINCOVIT WITH FRUITS DEVICE LABEL was valid in light of the petitioner’s prior copyright registration?
2. Whether the second respondent's artistic work was a copy or a substantial reproduction of the petitioner’s work?
3. Whether the Register of Copyrights should be rectified by expunging the second respondent’s registration?
Reasoning of the Court:
The Court examined:
1. Prior Copyright and Trademark Rights:
The petitioner had registered the word mark ZINCOVIT on 16.03.1988 and obtained copyright registration for its ZINCOVIT SYRUP artistic label on 22.10.1997 (No.A-54243/1997).
The petitioner’s label depicted fruits and vegetables in a distinctive manner, which was first published in 1990.
2. Unauthorized Registration by the Second Respondent:
The second respondent applied for copyright registration on 29.12.2009, long after the petitioner had secured its copyright.
The registration was granted on 29.03.2011 (No.A-90270/2011).
The petitioner argued that the second respondent was merely a contract manufacturer and had no independent rights over the ZINCOVIT label.
3. Substantial Copying and Judicial Precedents:
The Court compared both artistic works and found that the second respondent’s work was either a direct copy or a substantial reproduction of the petitioner’s copyrighted label.
A Division Bench of the Allahabad High Court (Judgment dated 11.07.2014) had already held that the petitioner was the prior user, and the second respondent's artistic work was similar to the petitioner’s.
The Court also noted that the second respondent’s trademark applications for ZINCOVIT in Classes 31 & 32 were dismissed as abandoned, and the trademark registration in Class 29 was directed to be rectified by order dated 14.06.2024 in (T)OP(TM) No.443 of 2023.
Decision:
The Court allowed the petition and directed the Registrar of Copyrights to rectify the Register by expunging the second respondent’s copyright registration No.A-90270/2011 for ZINCOVIT WITH FRUITS DEVICE LABEL. The order was to be implemented within four weeks.
Law Point Settled:
1. Prior Copyright Ownership Prevails: A copyright registration granted later cannot override an earlier registration unless independent originality is proven.
2. Substantial Copying Invalidates Copyright Registration: If a later work substantially copies an earlier registered artistic work, the later registration is liable to be expunged.
3. Contract Manufacturers Have No Independent Rights: A contract manufacturer using a label with the trademark owner’s permission cannot claim independent copyright over that label.
Case Title: Apex Laboratories Private Limited Vs. The Registrar of Copyrights & Anr.
Date of Order: 13th February 2025
Case Number: (T)OP(CR)/6/2024
Court: High Court of Judicature at Madras
Hon'ble Judge: Justice Senthilkumar Ramamoorthy
