Court’s decision
The Madras High Court dismissed a petition seeking suspension and expunction of a copyright registration granted in favour of the Respondent for an artistic label used on its coconut oil product. The Court held that the Petitioner failed to prove copyright infringement, deceptive similarity, or unlawful registration under the Copyright Act. After a detailed examination of the competing labels, trade dress elements, trade usage, and the statutory framework governing copyright originality, the Court found that the Respondent’s label was independently created, distinct, and duly registered. The Court observed that variations in colour, layout, wording, device marks, and overall artistic presentation negated any allegation of copying or colourable imitation.
The Court also took note of the Respondent’s ex parte status and the extensive materials presented by the Petitioner, including prior Delhi and Bombay High Court injunctions against unrelated third parties. Despite these precedents, the Court held that the Petitioner failed to produce evidence establishing that the Respondent’s label was a reproduction or substantial imitation of its well-known PARACHUTE label. The Court emphasised that copyright law protects only original artistic works and that the Petitioner attempted to monopolise generic design elements commonly used within the coconut oil industry. Ultimately, the Court dismissed the petition without costs and declined to interfere with the copyright register.
Facts
The dispute arose when the Petitioner, a leading manufacturer of consumer products, sought removal of the Respondent’s copyright registration for an artistic label used on its EVEREST coconut oil packaging. The Petitioner claimed that this label substantially copied essential elements of its own well-known PARACHUTE label, including its colour combination, broken coconut device, and coconut tree design. The Petitioner alleged that these features were distinctive, copyright-protected, and exclusively associated with its brand through long-term commercial use.
In support, the Petitioner pointed to multiple trade mark registrations and earlier copyright registrations predating the Respondent’s registration. It also highlighted earlier incidents in which third parties had allegedly infringed its packaging design, producing product images and extracts from Delhi and Bombay High Court orders relating to those matters. The Petitioner contended that the Respondent fraudulently obtained copyright registration by concealing the existence of these earlier rights and by misrepresenting the originality of its work.
The Respondent did not appear and was set ex parte. Nonetheless, the Court reviewed the Respondent’s reply to a prior cease-and-desist notice, where the Respondent asserted long-standing use of its EVEREST mark and label since the early 2000s. The Respondent argued that its adoption of the mark and the label was honest, independent, and supported by valid copyright registration. These competing claims formed the factual basis of the petition.
Issues
- Whether the Respondent’s artistic label infringed the Petitioner’s prior copyright-protected PARACHUTE label.
- Whether similarities in colour palette, coconut tree imagery, or trade dress elements constituted substantial reproduction under copyright law.
- Whether the Respondent’s copyright registration was obtained by misrepresentation, warranting expunction under Section 50 of the Copyright Act.
- Whether generic design components widely used in the coconut oil industry could be exclusively appropriated by the Petitioner.
Petitioner’s arguments
The Petitioner argued that the Respondent’s label was a colourable imitation of its PARACHUTE label, emphasising the similarity in blue-green colour combination, coconut tree device, broken coconut image, and overall visual presentation. According to the Petitioner, these features were distinctive identifiers of its brand and enjoyed copyright protection, trade mark registration, and decades-long goodwill. It asserted that the Respondent concealed these facts and wrongfully secured registration in violation of Section 45 of the Copyright Act.
The Petitioner further argued that the Respondent’s conduct reflected a pattern of copying, referencing past infringements by unrelated parties and earlier judicial orders restraining imitation of its trade dress. It maintained that the Respondent’s label sought to exploit its market reputation by deceiving consumers. The Petitioner insisted that the Respondent’s registration was a pirated work, lacked originality, and should be removed from the Register of Copyrights. It requested suspension of the registration during proceedings and permanent expunction thereafter.
Respondent’s arguments
The Respondent, though ex parte, had earlier submitted a detailed response to the Petitioner’s cease-and-desist notice. In that reply, the Respondent asserted that it had used the EVEREST mark since 2006 and had adopted its label in 2007. It claimed that the label was independently created and had been used continuously in commercial trade, gaining market acceptance. The Respondent emphasised that its label was duly registered under Copyright Registration No. A-85790/2009, establishing prima facie originality.
The Respondent further contended that similarities alleged by the Petitioner were generic to the coconut oil market. It argued that the Petitioner could not claim exclusivity over common colour schemes or commonly used imagery such as coconut trees or broken coconuts. The Respondent therefore denied infringement, stating that its artistic label differed in wording, design style, and visual composition, and that no consumer confusion or deceptive similarity existed.
Analysis of the law
The Court examined the statutory framework under Section 50 of the Copyright Act, which permits rectification of the Copyright Register only when a registration has been wrongly made or is fraudulently remaining. The Court emphasised that copyright protects original artistic works and does not extend to ideas, generic imagery, or widely used trade motifs. To succeed, the Petitioner was required to demonstrate substantial copying or reproduction of protectable elements of its label. This is a high threshold requiring clear evidence of imitation.
The Court observed that artistic comparison must focus on the work as a whole, assessing visual impression, creativity, arrangement, and composition. Merely showing that competing products share industry-common features does not establish infringement. The Court also reiterated that copyright law cannot be used to create a monopoly over basic design features, particularly when such features lack distinctiveness or unique creativity.
Precedent analysis
The Court reviewed the judicial orders cited by the Petitioner, including decisions of the Delhi High Court restraining third parties from imitating its trade dress. However, the Court found that those orders related to different defendants and different factual matrices. The Court held that precedent involving clear imitation could not automatically support a claim against a party whose label was materially distinct.
The precedents primarily illustrated that courts protect distinct trade dress when imitation is apparent. In contrast, the Court found no such imitation in the present case. The Petitioner’s reliance on these decisions was deemed insufficient to establish infringement because the Respondent’s label, upon comparison, showed clear differentiation in design elements.
Court’s reasoning
The Court meticulously reviewed both labels, including the comparative images provided by the Petitioner. The Court found that although both labels used the colour blue, this choice was common within the coconut oil industry and could not confer exclusive rights. The Court noted distinct differences in wording, artwork, device marks, and layout. The Respondent’s EVEREST label differed significantly from the PARACHUTE label in overall artistic expression.
The Court also stressed that the Respondent’s mark was independently registered and approved by the Registrar of Copyrights and that the Petitioner had not offered substantive proof of misrepresentation. It concluded that no deceptive similarity existed and that the petition represented an attempt to monopolise trade dress within a competitive market. As a result, the Court held that the Petitioner failed to establish infringement or justify removal of the Respondent’s registration.
Conclusion
The High Court dismissed the petition, holding that the Petitioner did not meet the statutory threshold for rectification under Section 50 of the Copyright Act. It reaffirmed that copyright protection cannot be extended to common design elements used across an industry. The Court declined to suspend or expunge the Respondent’s registration and found no evidence of copying, deception, or fraudulent procurement. No costs were imposed.
Implications
This ruling has significant implications for copyright enforcement, trade dress protection, and brand strategy within the consumer goods sector. It reinforces that copyright rectification petitions require strong evidence of imitation and cannot rely on mere market dominance or historical litigations. Businesses seeking to protect their packaging must demonstrate originality and distinctiveness while recognising that generic visual motifs cannot be monopolised. The judgment also underscores judicial reluctance to interfere with valid copyright registrations unless statutory grounds are clearly satisfied.
