A painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality is designated an Artistic work as per Section 2(c) of the Copyright Act, 1957. However, various judicial precedents and interpretations has made the term 'Artistic Work', a point of contention, especially in the cases wherein the Artistic Work is to be used in relation to goods or services or simply, trade purposes. The proviso of Section 45(1) of the Copyright Act, 1957 specifically deals with such cases wherein if an Artistic Work is to be used or is capable to be used in relation to goods and services, the copyright application in Form XIV shall mandatorily contain a statement representing that "the Artistic Work is to be used in relation to goods or services" along with a Certificate/ Search Certificate from Registrar of Trade Marks stating that "No Trademark identical with or deceptively similar to such artistic work has been registered under the 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". In order to furnish such Search Certificate/ No objection Certificate, the applicant as per Rule 22 of the Trade Mark Rules, 2017 and Rule 70(6) of the Copyright Rules, 2013 has to file a form titled TM-C with the Trade Marks Registry, thereafter, as according to Rule 22(1), the Registrar issues an examination report containing the cited trademarks and the reasons stating non-issuance of the Search Certificate, and if there aren't any objections, a Search Certificate or a Non-Objection Certificate is issued to the Applicant. It becomes pertinent to note here that the criteria of distinguishing the existing trademark with the applied artistic work is determined by the Trademark Law, in a usual practice, attorneys usually state the contentions similar to the ones which are used in differentiating between trademarks in a trademark search report like distinguishing the visual, phonetical and conceptual aspects (similarity of goods and/or services) of the applied work and cited marks. Nonetheless, the gray area of the said matters starts from here.
It is an established fact that an Artistic Work to be used in relation to goods or services cannot be granted Copyright Registration if the same is either identical or deceptively similar to a prior used or registered Trademark (proviso of Section 45(1) of Copyright Act, 1957) and vice-versa is also true (Section 11(3)(b) of the Trade Marks Act, 1999). As stated above, the parameters of ascertaining the similarity between the applied work and cited trademarks is the same as while differentiating between two trademarks i.e., visual, phonetical and conceptual index. The question arises that if the applied work and cited trademark are visually dissimilar, but on the other hand, they are phonetically identical/ deceptively similar (for example: 'A' has an existing trademark titled 'QWERTY' both as word and as label and the same is used for the goods say, 'Welding rods' and another person 'B' applied for an artistic work to be used in relation to goods similar to 'A', with a distinctive design, however, the same contains the word 'QWERTY' in an open manner), can the issuance of the Search Certificate of the artistic work be refused on that very ground of phonetical similarity, considering the ambiguity between trademark and copyright law wherein the former states that phonetical identity is an important index of comparing competing marks and the latter one states that 'titles' are not recognised and protected under the Copyright law. Moreover, at the juncture where the TM-C is applied for issuance of Search Certificate, should the proprietor of an existing trademark be allowed to oppose/object such issuance of Search Certificate, since if the same is granted, the applied artistic work which is to be used in relation to goods and/or services might as well be granted copyright and the infringer will have a blanket protection of copyright law to use the same in whatsoever manner he wants and will raise a conflict between deciding the fact that which right (trademark or copyright) will suffice over other, the act of the person applying the artistic work, will definitely serve as a platter of infringement and confusion among people and consecutively, dilute the purpose of trademark law. There are less to no judicial precedents resolving the said gray area and even the statutes are also silent on the issue, therefore, coming to a solid conclusion might be a hard nut to crack, nevertheless, the said gray area can be divided into sub-issues and then be concluded. Prima facie, if the intention of the statues is interpreted, it can be said that the drafters wanted the distinctiveness of artistic work which is to be used in relation to goods and/or services be adjudged by the Trade Marks Registry as that might be the reason for introducing the mandatory nature of the Search Certificate issued by Trade Marks Registry, reasons substantiating this include: firstly, even the proviso of Section 45(1) states that "No Trademark identical with or deceptively similar to such artistic work has been registered...." [emphasis on the word 'trademark'] and as according to Section 2(zb) of the Trade Marks Act, 1999 "trade mark" means a mark capable of being represented graphically..." and further "mark" includes a device, brand, heading, label, name, signature, word, letter, numeral...1 [emphasis on the word 'word']. And secondly, while filing the TM-C, the site specifically asks for title of the artistic work applied and as stated above, the IP Attorneys also follow the same point of distinctions as they use in the replies of Trademark Examination Reports. These observations in some way or the other conclude that initially the applied Artistic Work which is to be used in relation to goods and/or services or as a trade dress is levelled at the same position as that of the Trademarks. Now, considering the aspects of Trademark Law, it is a logical fact that the word per se of a trademark, be it from the word mark itself or a device/ label mark is a dominant portion of that specific trademark and as according to the rule of dominant feature2, if a person adopts a similar mark as that of that dominant feature, the same amounts to an infringement, this has been observed by the Apex court in ample of cases, When a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the consumers and clients of someone else to himself and thereby resulting an injury3. In so far as the similarity between word per se of two competing trademarks is concerned, the same can also be termed as phonetical similarity, which is considered to be as a cardinal parameter to ascertain deceptiveness between two marks, it has also been held that the tests of phonetic, visual and structural similarity are disjunctive4. Having said that, this should mean that the artistic work having the title or the written part similar to a pre-existing trademark must be refused for issuance of Search Certificate and the person whose rights are being infringed from the impugned artistic work must be allowed to object the issuance of the Search Certificate. A stance similar to the one observed in Trade Marks law has been observed in Judicial Precedents pertaining to Copyright laws, in the landmark R.G. Anand5 case it has been observed by Hon'ble Supreme Court that it is not necessary that the infringement should be an exact copy of the original but its resemblance in the original in a large manner is sufficient to indicate that it is a copy. Further, in para 42, the apex court also stated that "the similarities relate to the fundamental and substantial aspects of works". The same stand was also affirmed by Hon'ble Bombay High Court by stating that "while deciding the question of infringement of copyright, it is not necessary that the defendants work must be exact reproduction of the plaintiff's work. What is essential is to see whether there is reproduction of the substantial part of the plaintiff's work"6 Also, it is unarguable fact that if an artistic work is used as a trade dress (in relation to goods or services), the words written therein either symbolizing a brand or a tagline, will definitely denote the "fundamental" and "substantial" part of that particular artistic work.
CONCLUSION/ THE WAY AHEAD:
The language of the statue and the cognate judicial precedents in line hint upon the direction that such Artistic Work(s) used as a trade dress/ packaging/ label in relation to goods and/or services must be adjudged in a similar nuance as two trademarks are compared. Although the decision will significantly differ from case-to-case basis, however, with the already aligned tests for comparing two trademarks such as Triple Identity Test7 and for comparing two copyrightable works such as R.G. Anand Test which has been approved by Hon'ble Supreme Court in various other cases8 can be amalgamated in the instances wherein the Artistic Work that is to be used in relation to goods and/or services is to be adjudged similar to any existing Trademark and especially word mark. The other door which has to be knocked is to regulate the objections which will be submitted by proprietors of the existing trademarks, and in order to achieve that, a separate TM-C Journal should be launched which will enclose every application for Search Certificate so that the trademark proprietors can object the issuance of search certificate of those Artistic Works which are similar to their mark. The existing law is rather a very wide approach and does not separately entail the objection part on behalf of the aggrieved party, an amendment to that effect can happen which may include the clause that if any objection is received, the further process shall apply mutatis mutandis as per Rule 45, 46 and 47 of the Trade Marks Rules, 2017. Second option, which is rather a heavy one to be curtailed, is to remove the criteria of copyright registration of Artistic Works to be used in relation to goods and/or services, such works may only be registered as trademarks and not copyright. One way or the other, the aforementioned gray area still remains unresolved and as of now does not surround any similar judicial precedents or legislative amendments, although there are many unreported cases in the tribunal pending judgement on the said issue. Therefore, it becomes the need of the hour to resolve the lacuna comprising of both Trademark and Copyright laws simultaneously.
AUTHOR DETAILS: Samrat Singh Kang, Amity University (Madhya Pradesh)
1. Section 2(m) of the Trade Marks Act, 1999.
2. M/s South India Beverages Pvt. Ltd. v. General Mills Marketing, 2014 SCC OnLine Del 1953
3. Laxmikant V. Patel Vs. Chetanbhai Shah and Another [(2002) 3 SCC 65]
4. Sun Pharmaceutical Industries Ltd. and Anr. v. Kinetic Lifescience (Opc) P. Ltd. and Anr. CS (COMM) 241/2021
5. R.G. Anand v. Deluxe (1978) 4 SCC 118: AIR 1978 SC 1613
6. Nagpur Distilleries (P) Ltd. v. Karmaveer Shankarrao Kale, 2017 SCC OnLine Bom 10064.
7. Sumeet Research and Holdings v. Sipra Appliances - CS (COMM) 428/2016.
8. M.R.F Ltd v. Metro Tyres Ltd (2019) SCC Online 8973.
Vinay Vats v/s Fox Star Ltd. CS(COMM) 291/2020.
ALTERNATE TITLE: Gray Area in the Intersection of Copyright and Trademark Law: The Dilemma of Artistic Works Used in Relation to Goods and Services
META DESCRIPTION: This article delves into the legal gray area surrounding the use of artistic works in relation to goods and services for trade purposes. It explores the requirements for copyright registration of such works under the Copyright Act, 1957, and the need for a search certificate from the Registrar of Trademarks. The article also discusses the issue of phonetic similarity between the applied work and cited trademark, and the potential conflicts between trademark and copyright law which can arise at the juncture of applying the TM-C, further some suggestions and way ahead correspond to some ideas that can be inculcated to lighten up the discussed gray area.
KEYWORDS: Artistic work; Copyright Act; Trade Marks Act; Trademark; Search Certificate; TM-C; Infringement; Similarity; Identicality; Trade Mark Rules; Copyright Rules; Judicial Precedents; Distinctiveness; Goods And Services; Phonetical Similarity.
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