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Mandatory Trademark Clearance for Copyright

Mohd Ershad Sole Proprietor EK Agencies v. Registrar of Copyrights and Ors.

INTRODUCTION

What comes to mind when one mentions Amul? It’s very likely a girl carrying a piece of toast with butter. Quite evidently, the packing and labelling of products, as well as artistic works on them contribute extensively to a brand’s identity. Brands like Parle-G, Lijjat Papad, and Nirma among various others have used distinguishing mascots on their packaging. Artistic works are capable of creating a visual image of the product in the minds of consumers. The same holds true for services, for instance, Air India has promoted their regal hospitality with its mascot Maharaja. Since, artistic works have such a direct impact on consumer perception, if imitated by a competitor they can significantly harm a brand’s legibility and profitability. This is where the Copyright Act comes into the picture, it attempts to provide a robust mechanism to avoid such imitation.

Under Section 45 of the Copyright Act, a NOC in form of a search certificate (TM-C) needs to be issued by the Trademark Registrar before registering artistic works which could also be the subject matter of a pending or a registered trademark as copyright. This could include a company logo, packaging, labels, cartoons, and figurative artwork. The Delhi High Court reiterated the need for this mandatory trademark clearance under Section 45 in the recent judgement of Mohd Ershad Sole Proprietor EK Agencies v. Registrar of Copyrights. This article discusses the judgement of the EK Agencies case, in brief, to assess whether or not there is a need for such a mechanism.

CASE SUMMARY

Mohd Ershad Sole Proprietor EK Agencies v. Registrar of Copyright and Ors

Facts

M/S EK Agencies, the petitioner, has been engaged in the production and trade of tea leaves since 1998. The company claimed that the label, packaging, and artistic work on the respondent’s product, “Asli Kesari Chai,” is deceptively similar to those on one of its goods, “Highgron Kesri Chai.” Both the petitioner and the respondent had the artistic work on their labels registered in the Copyright Registry after obtaining a NOC from the Trademark Registrar under the Copyright Act. On knowledge of the Respondents’ Copyright Registration, the petitioner filed an objection with the Registrar of Trademarks and on inquiry the NOC granted was revoked. Thus, the Petitioner sought that the Copyright granted on the basis of the NOC should be held invalid and the copyright register must be altered.

Question

Whether the cancellation of NOC by the Trademark Registrar would amount to a revocation of the Copyright.

Holding

S.45 of the Act makes it mandatory to obtain a NOC from the trademark registrar for the registration of artistic work capable of being used as a Trademark. An exception has only been made for the non-commercial use of artistic works, i.e for educational purposes. The objection raised by the petitioner was accepted and subsequently, the NOC was revoked, and so the copyright registration would not stand. Thus, the Copyright of the Respondent was revoked too. The court while deciding in favour of the petitioner barred the respondent from the use of the packaging, labelling, colour and presentation of words and artistic work of that the Petitioner. The respondent could however continue the use of the name “Asli Kesari Chai” as long as the packaging and labelling were changed.

Reasoning

The intent of S.45 is to avoid imitation of labels, packaging and artwork on goods or artistic work in terms of services. A comparison of the packaging of both products shows an intentional imitation on the part of the respondent. The court also referred to the order by the trademark registrar while revoking the NOC. The artistic label of a woman plucking tea leaves is identical, the manner of presentation of the words, logo and devices are also identical and as per the petitioners’ contention, the same would, in fact, create confusion in the minds of consumers. The court thus ruled in favour of the Petitioner and the copyright granted to the respondent was cancelled and the register would be altered in accordance with S.50 of the Act.

Justice Prathiba M. Singh, the learned judge in the case also referred to her previous judgement in the case of Abhishek Kumar v. Union Of India Through Registrar Of Copyrights & Ors with similar facts. There she emphasized that “Obtaining a NOC under the proviso to Section 45 of the Act is compulsory in order to obtain registration of copyright” and as such the copyright registered in favour of the respondent would be seen as an entry which is wrongly made and wrongly remaining on the register in terms of Section 50 of the Act.

OBJECTIVE VS. CONFLICT OF SECTION 45

The legislative goal behind making a NOC mandatory for a Copyright appears to be clear – avoid unnecessary litigation related to copyright infringement in relation to artistic works of goods or services. The proviso of S.45 states that “…no trademark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant. However, when one company uses deceptively similar packaging, the aggrieved company, upon knowledge of such infringement is quite likely to institute a suit to protect its copyright.” From the above and similar cases, it is seen that a NOC may be objected to, and the Copyright thus granted may be revoked through a lawsuit, negating the purpose of the provision.

Secondly, the registration of copyright in itself is not mandatory, it is merely a record and at best has evidentiary value in a case of infringement. If the creation of an artistic work infringes on a person’s trademark rights, that person is able to sue the artistic creator in a court of law even if the aforementioned artistic work is not registered as a copyright. As stated in various precedents, registration does not create or grant any new rights and is not mandatorily required to bring an action for infringement. This makes such a clearance process for registering a copyright unnecessary as an infringement can be claimed with or without the NOC. Add to this the expense of obtaining a NOC from the Trademark registrar, which is up to five times the cost of registering a copyright, it is quite likely that many works may not be registered at all.

An obvious question that comes to mind is, wouldn’t a free online trademark search by the author to check for similar trademarked works before registering his work provide a better alternative for such time consuming and expensive procedure?

THE PRACTICAL NEED OF SECTION 45 OF THE COPYRIGHT ACT

Section 45 of the Copyright Act may appear to be a needless supplementary step on the surface, but in the words of Justice Oliver Wendell Holmes, “The life of the law has not been logic: it has been experiencing.” In my opinion, the mechanism provided under Section 45 is an acknowledgement of and an attempt to fill the loopholes in the Copyright Act in regard to artistic works displayed on goods and services.

The requirement for registration of a Copyright is the payment of the prescribed fees with the application. Probably the only condition that distinguishes the registration of artistic work from other work is the need to provide information about the artist who creates the work (if the applicant is different from the artist).  Granted, the registrar “may” hold an inquiry as it may deem fit (S.45(2)) and check the accuracy of an application for its particulars or on the basis of objections received. (Rule – 16(4)& (5)), but it lacks a stringent process for the registration of a copyright.  In the case of labels or logos, which is in the nature of an artistic work, to be registered as trademarks, it goes through a number of formal steps, including an examination report, adherence to any objections, advertisements, and finally registration, as per the relevant provisions of the Trade Marks Act and Trade Marks Rules, 2002.

Now, if we were to remove the requirement of a NOC it is quite possible that two different people could obtain protection for the same or similar artistic work on the same day under the Trademark and Copyright regime with no way to figure out who would be the actual owner of the work.

CONCLUSION

From weighing the pros and cons of the procedure laid under S.45, the need for NOC clearance is quite evident and clearly cannot be substituted by a search online. Also, it is unrealistic to expect all authors to uphold the moral obligation of checking the Trademark registry. If the argument that S.45 is redundant were to be accepted, it could undermine “One Mark, One Source and One Proprietor,” One of the fundamental rules of Intellectual Property Law, namely Trade Mark. From the above judgements it is also clear that if a copyright registration request is denied or revoked, the artistic work is regarded as not being copyrighted. In light of all this, it is safe to conclude that such NOC clearances are not just necessary for evidence but also for invalidating any pointless copyright registration and thereby avoiding the need for future litigation.

Author(s) Name: Henlynn D’souza (Jitendra Chauhan College of Law)