Case Title: Sonani Industries Pvt. Ltd. Vs. Mr. Sanjay Jayantbhai Patel & Anr.
Case Number: C.O. (COMM.IPD-CR) 880/2022, C.O. (COMM.IPD-CR) 881/2022 & C.O. (COMM.IPD-CR) 882/2022
Neutral Citation: 2024:DHC:—
Date of Order: 4th November, 2024
Court: High Court of Delhi at New Delhi
Hon’ble Judge: Justice Mini Pushkarna
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Factual Background
This case arises out of a series of rectification petitions filed by Sonani Industries Pvt. Ltd., earlier known as Sonani Jewels Pvt. Ltd., seeking cancellation of the copyright registered in favour of Mr. Sanjay Jayantbhai Patel (Respondent No. 1). The dispute essentially concerns the ownership and validity of certain copyright designs and artistic works allegedly used in the jewelry business of both parties.
Sonani Industries, a renowned jewelry manufacturer, contended that the registration obtained by Sanjay Patel was done in violation of the mandatory procedural safeguards under the Copyright Rules, 2013. The petitioner’s principal argument was that while submitting Form XIV for copyright registration, the respondent failed to comply with Rule 70(9) of the Copyright Rules, which mandates the applicant to notify any person who is likely to have an interest in or objection to the registration. According to Sonani Industries, this rule is an essential part of the registration process, and failure to follow it renders the registration void.
At the same time, a separate civil suit for copyright infringement had been instituted by Sonani Industries before the District Court at Surat, alleging unauthorized use and copying of its artistic jewelry designs by the respondents. That civil dispute is still pending adjudication.
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Procedural History
The petitions for rectification were filed before the Delhi High Court’s Intellectual Property Division (IPD), which has jurisdiction over copyright rectification matters. Meanwhile, in the related civil proceedings at Surat, the trial court had refused to grant a full injunction in favour of Sonani Industries but had directed the respondents to maintain proper accounts of sales and refrain from disclosing the disputed copyright details to third parties.
Aggrieved by the partial relief, Sonani Industries approached the Supreme Court by way of Special Leave to Appeal (C) No. 20025/2014, titled Sonani Industries Pvt. Ltd. v. Prime Diamond Tech & Ors.. On 9th September 2024, the Hon’ble Supreme Court directed the District Court, Surat, to make an effort to dispose of the pending civil suit within one year.
Meanwhile, in Delhi, the rectification petitions (C.O. (COMM.IPD-CR) 880/2022, 881/2022, and 882/2022) were taken up together by Justice Mini Pushkarna. The petitioner’s argument was centered on the illegality of the registration process, while the respondent argued that the issues raised in the rectification petitions overlapped entirely with the subject matter of the Surat civil suit.
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Core Dispute
The core dispute revolved around two principal questions:
First, whether the registration of copyright in favour of Respondent No. 1, Mr. Sanjay Patel, was valid when the petitioner was not notified as required under Rule 70(9) of the Copyright Rules, 2013.
Second, whether the Delhi High Court should proceed to hear the rectification petitions independently or defer its decision until the conclusion of the civil suit pending before the District Court, Surat, where similar issues were under consideration.
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Arguments on Behalf of the Petitioner
Senior Advocate Mr. Raj Shekhar Rao, representing the petitioner, emphasized that the registration in favour of Sanjay Patel suffered from fundamental procedural defects. He pointed out that Rule 70(9) mandates that, before filing Form XIV, the applicant must give prior notice to any party likely to be affected by the registration. Since Sonani Industries had been in continuous commercial use of the designs in question, failure to serve notice vitiated the process entirely.
Counsel further argued that statutory requirements under Rule 70(9) are not mere formalities but safeguards designed to prevent fraudulent or overlapping copyright claims. He cited Bharat Tea Suppliers v. Gujarat Tea Traders & Anr., 2021 SCC OnLine Bom 3637, where the Bombay High Court had underscored the importance of compliance with statutory provisions in copyright registration procedures.
Relying also on the Delhi High Court’s order dated 2nd May 2024 in C.O. (COMM.IPD-CR) 750/2022, the petitioner contended that the Registrar of Copyrights must act strictly in accordance with statutory procedure, and failure to do so renders the registration liable for rectification or cancellation under Section 50 of the Copyright Act, 1957. Thus, since no notice had been given, the copyright entry in the Register of Copyrights could not stand.
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Arguments on Behalf of the Respondents
Senior Advocate Mr. Hay Savla, appearing for the respondents, countered the allegations by asserting that there was full compliance with Rule 70(9) and that the copyright registration in favour of Mr. Patel was validly obtained. He further argued that the Delhi High Court should not entertain these rectification petitions while the matter is pending before the Surat District Court, as both involve overlapping factual and legal issues.
According to the respondents, the petitioners were attempting to re-litigate issues already under active consideration in the civil suit. He also submitted that the copyright registration, once granted, is not a public notice of infringement but merely an administrative act confirming authorship and ownership. Hence, there was no requirement to presume that Sonani Industries had any right to object at the time of registration.
Mr. Savla highlighted that the District Court, Surat, had found no prima facie case of infringement against the respondents and had refused to grant an injunction restraining them from conducting their business. The only directions issued were to maintain accounts and not to disclose certain copyright-related information. These facts, he argued, demonstrated that the petitioner’s claim was weak even on merits.
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Judicial Reasoning and Analysis
Justice Mini Pushkarna, after hearing both sides, observed that the rectification petitions raised complex questions that were deeply intertwined with the factual matrix of the ongoing civil suit in Surat. The Court noted that the Supreme Court itself had already directed the Surat court to expedite the proceedings and dispose of the suit within a year. Therefore, it would be premature for the Delhi High Court to adjudicate the rectification petitions independently while the same factual and legal questions were sub judice elsewhere.
The Court analyzed the petitioner’s reliance on Rule 70(9) of the Copyright Rules, 2013, which reads that the applicant for registration must give notice of the application to every person who claims or is likely to claim any interest in the subject matter. While acknowledging the importance of this procedural rule, the Court held that the issue of whether such notice was indeed necessary and whether non-compliance invalidated the registration could only be effectively decided after evaluating the evidence and findings of the Surat trial court in the related infringement suit.
Justice Pushkarna also emphasized judicial comity and the need to avoid conflicting decisions between courts. Since the copyright infringement suit was already being examined in depth by the Surat District Court, any decision on rectification by the Delhi High Court could potentially lead to inconsistency or duplication of judicial effort.
Accordingly, the Delhi High Court deemed it appropriate to await the outcome of the pending suit rather than proceed with parallel adjudication. The Court thus decided to defer hearing and re-notify the matter for further proceedings after the decision of the Surat District Court.
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Final Decision
The Delhi High Court did not pass any substantive findings on the merits of the rectification claim but directed that the petitions be re-notified on 28th April 2025. Justice Mini Pushkarna recorded that, in light of the Supreme Court’s direction for early disposal of the related civil suit, it would be in the interest of justice to await that verdict before examining the rectification issue.
This order demonstrates judicial restraint and recognition of the interconnected nature of copyright disputes involving both infringement and registration validity. The Court reaffirmed that when two parallel proceedings are based on overlapping facts, it is prudent to await the outcome of one to prevent contradictory rulings.
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Significance of the Case
The order highlights a key procedural aspect in intellectual property litigation—coordination between civil infringement proceedings and rectification petitions. It clarifies that while copyright registration disputes are maintainable before the Delhi High Court, where factual overlap exists with pending infringement suits, the High Court may defer adjudication to ensure consistency.
Additionally, the case reiterates the importance of procedural compliance under the Copyright Rules, 2013, particularly Rule 70(9). The issue raised by the petitioner—whether failure to notify affected parties invalidates registration—is significant and will likely influence future decisions once the related suit is decided.
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Suggested Titles for Publication
1. Rule 70(9) and the Right to Notice: Procedural Integrity in Copyright Registration
2. Parallel Proceedings and Judicial Restraint: A Study of Sonani Industries v. Sanjay Patel
3. Copyright Rectification Deferred: When Civil and Administrative Jurisdictions Intersect
4. Procedural Defect or Overlap? Delhi High Court’s Measured Approach in Copyright Dispute
5. Balancing Copyright Rights and Judicial Comity: Lessons from Sonani Industries Case
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Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
