AI Structured Summary
Not yet generated for this judgment
Judgment
G.S. Sistani, J.
WP(C) No. 1604/2004
By the present petition under Article 226 of the Constitution of India, 1950 Petitioner seeks quashing of certificates numbered CC 2470/2002-03 dated 2003; CC 27/2002-03 dated 19.07.2003; and CC 28/2002-03 dated 19.07.2003 issued to Respondent No. 2 by Respondent No. 1 (Registrar of Trade Marks) u/s 45(1) of the Copyright Act, 1957.
The necessary facts for the disposal of the present petition are as under. The Petitioner claims to be engaged in the business of manufacturing and marketing bicycle parts for over past five decades. As per the petition, the said bicycle parts are marketed under the trade mark comprising of a trade dress which has distinctive colour combination, lay out, arrangement of features and get up to distinguish the cycle parts of the Petitioner from those of others in the market. One of such cycle parts of the Petitioner are Ball Head Racers. The Petitioner submits that the packaging pertaining to these products are registered marks of the Petitioner under the Trade and Merchandise Marks Act, 1958, which is now the Trade Marks Act, 1999, and which confers exclusive statutory right to the use of the features of these packagings by the Petitioner. The details of such registrations as culled out from paragraph 1 of the petition are reproduced as under:
Trade Mark
Registration No. & Date
Class
Goods
BM Ball Head Racer Packagings (Black, Red & White)
556912 dt. 21.08.1991
12
Parts and fittings included in Class 12 for use in bicycle
BM Ball Head Racer Packagings (Red, Blue & White)
556915 dt. 21.08.1991
12
Parts and fittings included in Class 12 for use in bicycle
Learned Counsel for the Petitioner submits that the Ball Head Racer packagings are also protected under the Copyright Act, 1957 by way of Copyright Registration No. A-55238/98 and No. A-55236/98. Copies of the said Copyright Registration have also been filed alongwith the present petition.
The counsel further submits that in March 1999, the Petitioner came to know that Respondent No. 2 (RS Industries, Plot No. 251, Nirankari Street No. 1, Miller Ganj, Ludhiana) is infringing the Petitioner''s trade mark and copyright by using packagings which are colourable limitations and deceptively similar to the Petitioner''s packagings. On interference by the United Cycle and Parts Association Ludhiana, the Respondent discontinued the use of the said packagings. However, in January 2002, the Respondent re-started the said unlawful trade activities, which led to the institution of Civil Suit No, 127/2002 before this Court and wherein, after notice and hearing the Respondent, this Court granted an order of interim injunction vide order dated 12.02.2002. which as per counsel for the Petitioner continues till date. Since Respondent No. 2 violated the order of this Court, a Contempt petition being CCP No. 169/2002 was filed by the Petitioner in this Court.
Learned Counsel for the Petitioner submits that later on they learnt that Copyright Search Certificates u/s 45(1) of the Copyright Act, 1957, have been issued to Respondent No. 2 by the Respondent No. 1, and which certify that no trade mark identical with or deceptively similar to the said artistic work has been registered under the Trade and Merchandise Marks Act, 1958, by any other person other than M/s R.S. Industries. Learned Counsel for the Petitioner submits that Respondent No. 1 has issued to Respondent No. 2 Certificate No. CC-27/2002-03 dated 19.07.2003; No. CC-28/2002-03 dated 19.07.2003; and, No. CC-2470/2002-03 dated 08.04.2003 in respect of the packaging which were found by this Court to be deceptively similar to the registered trade marks No. 556912 and 556915 dated 21.08.1991, while issuing the interim injunction.
The Petitioner is aggrieved with the issuance of the impugned certificates by the Respondent No. 1 and also that according to the Petitioner the same are being misused by the Respondent No. 2 in various legal proceedings. Counsel for the Petitioner submits that the said certificates could not have been issued by Respondent No. 1 as they are contrary to the record of Trade Marks Register. Counsel submits that it is apparent that the said certificates have been issued without perusal of the record of the Register of Trade Marks and in complete ignorance and violation of the proprietory right granted to the Petitioner vide Trade Mark Registration No. 556912 and 556915 dated 21.08.1991. It is strongly urged before this Court that the Respondent No. 1 has exercised its jurisdiction contrary to the provisions of Trade Marks Act, 1999 (earlier Trade and Merchandise Marks Act, 1958) and issued certificates in violation of the said provisions. Thus the present petition.
Respondent No. 1 in paragraph 4 of its counter affidavit has stated that while issuing the certificates, the answering Respondent had no knowledge about any court proceedings or any orders passed therein. It is submitted by the Learned Counsel for Respondent No. 1 that the impugned certificates were issued within the framework of Rule 24(3) of the Trade Marks Rules, 2002 and while issuing the impugned certificates, it was ascertained from the record of the Registry that no artistic work identical to or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 has been registered as Trade Mark under the Trade Marks Act, 1999, or that no such application has been made.
Furthermore it is argued by counsel for the Respondent No. 1 that the impugned certificates were issued to the applicants by the registry, exclusively for obtaining certificates u/s 45(1) of the Copyright Act, 1957 and that using certificate for any other purpose was illegal. Learned Counsel submits that the two trade Marks No. 556912 and 556915 relied upon by the Petitioner are entirely different from the artistic work for which certificates have been issued to Respondent No. 2 by the registry under the numbers CC 27/2002-03; CC 28/2002-03; and 2470/2002-03.
Notice in this petition was issued. Although counter affidavit has been filed by Respondent No. 2 but none has chosen to appear on behalf of Respondent No. 2 for the last atleast six dates of hearing.
Learned Counsel for the Petitioner submits, that the Respondent No. 2 was aware of the objections raised by the Petitioner with regard to deceptive colour scheme and colourable imitation of the Petitioner''s packaging. The Petitioner had earlier approached the United Cycle and Parts Association Ludhiana, and thereafter in 2002 the Petitioner had filed a suit against the Respondent No. 2 and which was being contested by Respondent No. 2. Learned Counsel for the Petitioner further relies upon Section 45(1) of the Copyrights Act, 1957 and the said section is reproduced herein below:
Entries in register of Copyrights.-
(1) The author or publisher of or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights:
Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that a no application has been made under that Act for such registration by, any person other than the applicant.
Thus according to this section Respondent No. 2 at the time of making an application before the Registrar of Copyright was to file a certificate, issued from the Registrar of Trade Marks, Counsel for the Petitioner submits that Respondent No. 2 has thus withheld material information from the Registrar of Trade Marks as well as the Registrar of Copyrights when he approached them seeking a registration u/s 45(1) of the Copyrights Act, 1957. The Registrar of Trade Marks without taking into consideration the correct test of ''viz-a-viz'', i.e. the similarity between the packaging of the Petitioner and Respondent No. 2 and without having prior knowledge and information that the Court had already taken a prima facie view that there is similarity, was infact mislead, and issued a certificate; in favour of the Respondent No. 2.
Taking into consideration that a prima facie view has already been taken by the High Court and having granted an order of injunction against Respondent No. 2, Respondent No. 2 was duty bound to have informed the Registrar of Trade Marks about the pendency of the Civil suits and objections raised by the Petitioner therein with regard to the colourable imitation of the Petitioner''s goods and which the Learned Counsel for the Petitioner has pointed out to be mandatory. Taking into consideration that the Registrar of Trade Marks did not have the knowledge of the inter-se disputes which were pending between the Petitioner and Respondent No. 2 and also the interim order passed by this Court. In view of the aforesaid, certificates numbered CC 2470/2002-03 dated 08-04-2003; CC 27/2002-03 dated 19.07.2003; and CC 28/200 2-03 dated 19.07.2003 issued to Respondent No. 2 by Respondent No. 1 u/s 45(1) of the Copyright Act, 1957, are hereby quashed. It is made clear that if in future any application is made by the Respondent No. 2, the latter will inform the Registrar of Trade Marks about the pendency of the suit between the Petitioner and the Respondent No. 2, as well as the interim order which has been passed by this Court. The Registrar will also issue notice to the Petitioner and only after hearing the concerned parties a final order be passed.
With these observations, the writ petition is allowed in the above terms.