Copyright Registration of an Art Work not Valid Evidence of User of Trade Mark- Delhi HC

The Delhi High Court has held that Copyright registration of an art work is irrelevant for the purpose of proving its use as Trade Mark.

The order was passed by a Single Judge Bench of Justice Suresh Kait in a challenge to the Intellectual Property Appellate Board’s (IPAB) order dismissing the Petitioner’s plea seeking registration of its trademark.

By way of background, M/s Khushi Ram Behari Lal (Export Division) was established in 1978 and carried on the business of processing, marketing and exporting of rice. The rice was sold under the trademark ‘TRAIN BRAND WITH DEVICE OF TRAIN’ (trademark).

In 1996, the Firm was taken over as a going concern by the Petitioner, M/s. Khushi Ram Behari Lal Ltd. Subsequently, the name of M/s. Khushi Ram Behari Lal Ltd. was changed to be M/s. KRBL Ltd. In order to acquire the statutory rights for the trademark, the Petitioner filed an application for its registration in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks in 1993.

After the Trade Marks Registry advertised the concerned trademark in Trade Marks Journal, the Respondent filed a notice of opposition on the grounds that it was also engaged in the business of Rice under the Trade Mark “TRAIN” which was registered since 1983.

After considering the rival contentions of the parties, the Registrar dismissed Petitioner’s Form TM-16 and refused the application for registration of the said trademark.

Aggrieved by the rejection, the Petitioner approached the IPAB which ultimately dismissed the appeal on the ground that the Respondents had adopted and registered the trade mark prior in point of time. The IPAB relied upon the Copyright Registration of Respondent over the art work ‘Train’ to establish its usage by the Respondent and thus held that Petitioner’s registration plea was hit by Section 9, 11 and 18 of the Act of 1999.

Setting aside the IPAB order, the Delhi High Court noted that the IPAB had not only ignored the fact that Respondent’s registration was only for the word ‘TRAIN’ but it also ignored the fact that the Respondent tried to prove the use at the time of his registration by forged and fabricated documents.

After perusing the invoices issued by the Respondent to establish user of the trademark, the Court noted that the device of the TRAIN brand is not the same on all the invoices, apart from having various other discrepancies.

It also rejected the IPAB’s reliance on the Respondent’s copyright registration over the art work ‘Train’ for the purpose of proving use of the trademark (in question). Holding that Copyright registration is extraneous for proving its use as Trade mark, the Court held:

“On perusal of the documents on record, I have no hesitation to say that the learned Appellate Board has relied on the Copy Right Registration of respondent under No. A44877/84. The Copy Right Registration of the art work of “TRAIN” brand is extraneous for the purpose of proving the use subject Trade Mark“.

Furthermore, the Court stated that the IPAB also failed to appreciate that the said trademark registration had been in use by the Petitioner under registration for almost 22 years without any interruption. For all those years, the Court observed, there was no confusion and deception reported by the Respondent.

“The goods of the petitioner bearing the subject matter trade mark is highly demanded not only in the domestic but also in international market viz. Reyadh, Dubai, Jeddah, Dammam, Saudi Arabia etc. on account of their superior quality, on the other hand the respondent is admittedly a dealer/commission agent based in Amritsar.”, it said.

Thus, the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of their discretion under Section 12 of the Act, it held.

Observing that the registration of the impugned trademark fulfilled the requirement for registration as prescribed in Trade Marks Act, 1999, the Court held that the Petitioner was entitled to the benefit of Section 12 of the Act for concurrent registration.

It thus decreed,

“In view of above facts discussed and legal position, I hereby set aside the impugned order dated 18.05.2012 passed by the Appellate Board and consequently, the application for registration of the Trade Mark “TRAIN” under No. 609141 in Clause 30 shall be proceeded for registration of the Trade Mark “TRAIN” brand for basamati rice. The writ petition is disposed of in the aforesaid terms.”

The Petitioner was represented by Advocates Ajay Amitabh Suman, Pankaj Kumar, Kapil Kumarand Vinay Kumar Shukla.

The Respondent remained unrepresented.