Court’s decision
The Madras High Court allowed a petition filed under Section 50 of the Copyright Act, 1957, and directed the Registrar of Copyrights to expunge the respondent’s name from the Register of Copyrights. The Court held that the impugned copyright registration was illegal and unsustainable, as it pertained to an artistic work already registered in favour of the petitioners.
The Court found that the entry in favour of the respondent was made contrary to Section 45 of the Copyright Act and based on invalid documentation. Consequently, the copyright registration certificate standing in the respondent’s name was declared illegal and ordered to be removed from the Register.
Facts
The petitioners are the registered proprietors of a trademark used in relation to homeopathic medicines, which was registered as early as 1991. The trademark, along with its artistic logo, was subsequently registered with the Copyright Office after obtaining the mandatory search certificate from the Registrar of Trademarks.
The petitioners later discovered that the respondent, who was carrying on an identical business, had obtained a separate copyright registration for the very same artistic features of the trademark. The petitioners contended that such parallel registration was impermissible under law and had been obtained by misrepresentation and suppression of material facts.
Issues
The principal issue before the Court was whether the Registrar of Copyrights could legally register the same artistic work in favour of two different persons.
A connected issue was whether a copyright registration obtained in violation of Section 45 of the Copyright Act and based on false or misleading documents could be rectified and expunged under Section 50 of the Act.
Petitioner’s Arguments
The Petitioners contended that they were the prior and lawful proprietors of the trademark and its artistic features, supported by trademark registration certificates and search certificates issued by the Trademark Registry. It was argued that the respondent’s registration was obtained despite clear records showing the petitioners’ ownership.
The Petitioners further submitted that the respondent’s conduct amounted to fabrication of records and misuse of statutory processes. It was argued that Section 45 expressly prohibits registration of an artistic work identical to an existing trademark without a valid search certificate, rendering the respondent’s registration void ab initio.
Respondent’s Arguments
The Respondent failed to contest the proceedings. Despite entering appearance initially, the respondent did not file a counter affidavit and subsequently remained absent. The Court proceeded to set the respondent ex parte.
As a result, the petitioners’ evidence remained uncontroverted, and no justification was placed on record to explain how the respondent obtained registration of the identical artistic work.
Analysis of the law
The Court analysed Sections 45 and 50 of the Copyright Act, 1957. Section 45 mandates that where an artistic work is used in relation to goods or services, the applicant must produce a certificate from the Registrar of Trademarks confirming that no identical or deceptively similar trademark is registered in favour of another person.
Section 50 empowers the High Court to rectify the Register of Copyrights where any entry has been wrongly made. The Court held that registration granted in violation of Section 45 constitutes a wrongful entry warranting rectification.
Precedent Analysis
Although no external precedents were cited, the judgment reinforces settled principles that copyright registration is procedural and does not override proprietary rights established under trademark law.
The decision aligns with established jurisprudence that statutory registers must reflect legal reality and that courts have a duty to correct entries procured through misrepresentation or contrary to mandatory statutory requirements.
Court’s Reasoning
The Court noted that documentary evidence clearly established the petitioners’ prior trademark registration and ownership of the artistic work. The search certificates produced demonstrated that the respondent could not have lawfully obtained copyright registration for the same artistic feature.
Given the respondent’s failure to contest the evidence and the clear statutory violation, the Court held that the respondent’s name was wrongly entered in the copyright register. It concluded that permitting such an entry to stand would defeat the object of the Copyright Act and encourage abuse of statutory processes.
Conclusion
The Madras High Court ordered rectification of the Register of Copyrights by expunging the respondent’s name as the owner of the artistic feature of the trademark. The impugned copyright registration certificate was declared illegal and unenforceable.
The judgment restores statutory discipline in copyright registrations and reaffirms that duplicate registrations for identical artistic works are impermissible under law.
Implications
This ruling has significant implications for intellectual property enforcement, particularly where trademarked logos and artistic works overlap with copyright registrations. It reinforces that copyright registration cannot be used to legitimise infringement of prior trademark rights.
The judgment also serves as a warning against attempting to secure parallel statutory registrations through misrepresentation or suppression, as such entries are liable to be struck down through rectification proceedings.
