One of the important criteria for obtaining registration under the Copyright Act, 1957 is that, the application must include a statement accompanied by a certificate from the registrar to the effect that no trademark identical or deceptively similar to such artistic work has been registered under the Trademark Act. As per the Copyrights rules 1958, the person applying for the registration is required to give notice to any person who claims or has any interest in the subject matter. Now, the moot question is whether a rival trader is an interested person as per the Act and should notice be sent to him also. Sakthi Kulangara Match Workers Industrial Co-operative Society Ltd v. Arason Match Industries, 2006 (33) PTC 542 (CB); precisely discusses this issue.
The petitioners, Shakti Kulangra Match Association, (SKMWI) are a registered cooperative society, engaged in the business of manufacture and sale of safety matches started its functions from the year 1978. They adopted a trade label of three and four birds sitting on a branch of a tree and with the word marks ‘WE THREE’ and ‘WE FOUR’ respectively. They claim to use the said labels from 1983 onwards with the approval of Central Excise Authorities from time to time. The petitioners received a legal notice in 2001 from the respondents (Arasin Match Industries) alleging infringement of their trademark ‘WE TWO’ and carrying a similar trade label. Arason Match Industries further lodged a complaint before the Deputy Inspector General of Police alleging the violation of copyright under section 63 and 64 of the Act. The petitioners initiated a Writ petition seeking a direction to restrain the police from harassing them. In that Writ, the respondents (respondents here in were also made respondents in the writ), claimed that they are registered owners of the label "WE TWO" under the Copyright Act, 1957.
This being new information, the SKMWI, moved an application for expunging the entry in the register under section 50 of the Copyright Act.
SKMWI contended that the picture of the two birds sitting on a branch of a tree is a common picture, it has a limited way of expression and hence it lacks originality. Barring the legal notice in 2001, the SKMWI is using the trademark as well as the trade label uninterrupted. It is further contented that different producers of the matchbox are commonly using the picture of bird representing a family to create an image of household products.
The Arson Match Industries on the other hand contended that they were using the said label since 1956 and that the label of the SKMWI is only an adaptation of their Trademark.
On the question of interested persons the SKMWI submitted that they were very much interested persons and that it was mandatory that a notice about the proposed application for registration be sent to them, and that such concealment was with mala fide intentions. The Arason on the other hand argued that the SKMWI is infact an infringers and hence not entitled to notice.
The Court while addressing the question of interested person went into the intricacies of the Section 45 of the Copyright Act which mandates that in respect of an application for artistic works used or capable of being used in relation to any goods, a statement along with the certificate of Registrar of Trademark to the effect that no trademark identical with or deceptively similar to the artistic work has been registered under the act by any person other than the applicant himself. Further, Rule 16(3) make it explicitly clear that the person applying for registration under the Copy right Act shall give notice to every person who claims or has interest in the subject matter of the Copyright or disputes the right of the applicant.
The Copyright Act unlike Trademark Act, places heavy burden on the applicant. The Applicant as per section 45(1) is required to give a statement accompanied by a certificate from the Trademark registrar, about his rivals in the trade, to the effect that notrademark identical with or deceptively similar to his artistic work has been registered under the Act, by any other person other than the applicant himself. The rule has been further reinforced by the amendments brought out in 1992, which cast heavier duty upon the applicant to put his trade rivals to notice.
The court while finding the SKMWI an aggrieved person, buttress the finding by highlighting that as the respondent himself has initiated a complaint, alleging infringement of the copyright. The court ruled that an opponent is necessarily a person interested in the matter in an adversial system of dispensation of justice. The court also relied on the mandatory nature of rule 16(3) of the Copyright Rules, 1958.
It is clear from the provisions of the Copyright Act and Rules that a much heavy burden is cast upon the applicant and his duty to issue notice extends even to rival traders. One of the rationales for providing such stringent measures is to ensure that the applicant himself after obtaining registration faces no further difficulties.
© Lex Orbis 2006
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