Can an artwork that is under copyright be relied upon for obtaining trademark registration? The Delhi High Court recently disagreed, holding that copyright registration was "extraneous" to trademark registration, overturning a decision of the Intellectual Property Appellate Board (IPAB) in this regard.

The trademark in question was that of "Train" brand, along with the device of a train, used in connection with rice. The mark was in use since 1978, by a firm, whose corporate identity, through acquisition, etc., later changed to KRBL Ltd. When the firm applied to register its "Train" trademark in 1993, another party opposed its application on the ground that it was selling rice under a "Train" trademark, for which it had obtained registration in 1983. The Trademark Registrar refused KRBL's application for registration. Against this decision, KRBL approached the IPAB.

In the matter before the IPAB, KRBL contended that the Registrar had wrongly concluded that the opponent was the prior user of the trade mark, without verifying the documents filed along with the application for registration, which were forged and fabricated. KRBL also argued that the Registrar had not given due consideration to the honest adoption and concurrent user of its trademark, under Section 12.

The IPAB, in its order, agreed that many of the bill/invoices furnished by the opponent appeared to be suspicious, but it would not, in any way, "improve the prospect of securing ... registration" as the validity of the opponent's registered trade mark was not in issue. The IPAB noted that its role was to "discourage illicit commerce by use of such tainted mark", and that "making [a] concession under Section 12 which is essentially meant for a public purpose [would give] rise to the misgivings and would erode the legislative intent" of the provision. Accordingly, "all other incidental grounds vigorously raised both by the appellant (dubious supporting documents) and the respondent including (complicated ownership history of the appellant trade mark which passed through several hands) need not be gone into ... as these do not materially alter the factual position of the case."

The IPAB dismissed the appeal, and upheld the Registrar's decision, stating that the opposing mark was already registered and had been adopted earlier. It also relied upon a copyright registration relating to the opposing mark to establish its usage by the opponent.

The case came up in appeal before the Delhi High Court, in Khushi Ram Behari Lal vs. Jaswant Singh Balwant Singh (W.P.(C) 7983/2012 & CM Appl. 19969/2012, Decision of the Delhi High Court dated 21 January 2019). The court, held, among other things, that copyright registration could not be used to prove trademark usage. Besides the copyright issue, the court pointed out that the IPAB had ignored critical facts including the fact that the opponent had tried to prove the use of the mark at the time of registration on the basis of forged and fabricated documents. The court also noted that the IPAB had not considered the continuous use of the mark by the petitioner for almost 22 years, during the entire course of which period the opponent had not complained of any confusion or deception reported.

Eventually, the Delhi High Court held that the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of its discretion under Section 12 of the Trade Marks Act, 1999. The provision states that in the case of honest concurrent use of a mark, or any other special circumstances, the Registrar may permit the registration of two trademarks which are identical or nearly resemble each other in connection with the same goods, subject to conditions imposed by the Registrar. The court held that the KRBL mark fulfilled the requirements under the law, and that the firm was entitled to registration as a concurrent user.

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