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Judgment
This appeal u/s 72(2) of the Copyright Act, 1957 (hereinafter called ''Act'') arises out of and is directed against the order dated 2-7-1999
passed by the Copyright Board at Bangalore in Case No. 6 of 1996.
The essential facts of the case in brief leading up to this appeal are as follows: The parties would be referred to with reference to their rank
before the Copyright Board.
The petitioners filed a petition u/s 50 of the Act on 6-7-1995 with prayers to:
(a) Suspend the Copyright Registration No. A-51400/91, dated 25th February, 1992 obtained by the respondent.
(b) Revoke/cancel the Copyright Registration No. A-51400/91 dated 25th February, 1992 obtained by the respondent.
(c) Award costs of the proceedings and pass such further or other orders as the Court may deem fit and proper in the circumstances of the case
and thereby render justice.
It is averred in the petition that the trademark ''Prestige'' was originally registered under No. 141602 in Class 21 in the name of Platters and
Stampers Limited of England. The registration was assigned to the first petitioner by deed of assignment dated 4-10-1985. The first petitioner has
entered into a licence agreement with the second petitioner to use the trademark ''Prestige'' in respect of pressure cookers, pressure pans, cooking
and kitchen utensils. The second petitioner changed its name to TTK Prestige Limited on 26-7-1994. The trademark ''Prestige'' also forms a
prominent feature of the corporate name and trading style of the petitioners. The petitioners'' artistic work and trademark ''Prestige'' enjoys great
reputation and goodwill amongst the traders and public. It is distinctive of and is exclusively identified with petitioners'' goods and business.
It is further averred in the petition that the second petitioner enjoys exclusive copyright in the artistic work ''Prestige'' in stylized script in white
letters placed within red rectangle. The artistic work with distinctive colour scheme and get up was created by Mr. T.T. Jagan-nathan, Group
Managing Director of the petitioners in the course of employment. The artistic work ''Prestige'' label is the exclusive copyright of the second
petitioner. The said artistic work was first published in India in the year 1985 and has since been published continuously all over India till date. It is
further averred in the petition that the respondent issued a copyright and trademark warning notice in Times of India and Deccan Herald dated 1st
December, 1994 claiming to be the proprietor of the trademark ''Prestige'' and also claimed to be the owner of artistic work ''Prestige''. This notice
caused confusion and deception amongst the traders and public. Several traders, retail dealers and customers enquired from the petitioners
whether the respondent is associated with petitioners and is a member of TTK Group of Companies. The warning notice adversely affected the
business interest of the petitioners and wherefore second petitioner issued a notice to respondent''s trademark consultant on 2-12-1994 calling
upon the respondent to cease and desist from using ''Prestige'' as a trademark or a part of trading style. Reply dated 10th December, 1994 was
received from the respondent''s Advocate stating that respondent is the proprietor of the trademark ''Prestige'' registered under No. 365586 in
Class 24 and that respondent is also proprietor of copyright registered under No. A- 51400/91 and respondent is involved in real estates and
property development field only and refused to withdraw warning notice. Since respondent refused to furnish copy of trademark and registered
copyright, the petitioner filed C.S. No. 534 of 1995 and obtained exparte injunction for copyright infringement and the injunction is suspended
pending arguments and disposal of applications. It is further averred that the petitioners have exclusive copyright in the word ''Prestige'' written in
stylized script. The respondent has made a substantial reproduction of petitioners'' artistic work by adopting the script in respect of the word
''Prestige'' which is almost identical to the script used by the petitioners and an ordinary purchaser with imperfect memory would assume that the
respondent is associated with the petitioners and artistic work is adopted with a view to passing off and enable to pass off the respondent''s goods
and business as and for the petitioners goods and business- The respondent has committed act of passing off and infringement of copyright of the
petitioners and wherefore the petition.
The respondent filed written statement to the petition on 9-5-1998 averring that petition filed u/s 50 of the Act is misconceived, arbitrary and
illegal and unsustainable. The petitioner has no locus standi to file the petition. The respondent has traversed averment made in the petition
regarding patent and copyright owned by petitioners and has further emphatically denied that petitioners have been using work and trademark
''Prestige'' and that they enjoy great reputation and goodwill among traders and public. Respondent also denied that the trademark ''Prestige'' is
distinctive and exclusively identified with goods and business of the petitioners.
The respondent further averred that it is true that the respondent issued a trademark warning notice and that petitioners had filed C.S. No. 534
of 1995 which was allowed by order dated 26-3-1997. Being aggrieved the respondent filed an appeal in O.S.A. Nos. 103 to 107 of 1997 and
the Division Bench of the High Court of Madras allowed the appeal by order dated 2-9-1997 in the light of submission made by Counsel for
petitioners and respondents and observed that respondent shall be at liberty to use the word ''Prestige'' as the name of trading style for the purpose
of carrying on real estate business and the plaintiffs (petitioners herein) shall not object to it. In view of the said decision the present application has
become infructuous. The respondent emphatically denied that artistic work and trademark or as a part of trading style adopted by respondent is
deceptively similar to petitioners mark and that it has been adopted with deliberate intention to trade upon and benefit from the reputation and
goodwill enjoyed by the petitioners corporate name and trading style. As a matter of fact the respondent is a part of group of companies called
''Prestige Group''. The respondent adopted ''Prestige'' in respect of textiles in the year 1956, as a measure of diversification and with a view to
expand their business activities respondent floated a firm called ''Prestige Estates and Properties'' in the year 1987. The respondent has been using
trading style ''Prestige'' in a particular design, get up and artistic work since 1987. The respondent obtained registration in respect of copyright
''Prestige Estates and properties'' after duly complying with the provisions of the Act on 25-2-1992. The respondent adopted artistic work in the
field of real estate and property developers in 1985. Petitioners are not carrying on business which is similar to respondent. The field of activity of
petitioners and respondent are completely different and there cannot be any confusion in the market. The artistic work, design and get up adopted
by the respondent is not similar to the artistic work, design and get up adopted by petitioners. There is no similarity in copyright as alleged and
wherefore the petition is liable to be dismissed with heavy costs.
The petitioners and the respondent apart from the document produced with the petition and written statement respectively did not choose to
produce any other documents nor adduce any evidence before the Copyright Board and the Board by its order dated 2-7-1999 held that
petitioners have miserably failed to prove averment in the petition and have not made out any ground to revoke copyright registered by the
respondent on 25-2-1992 and accordingly dismissed the petition directing that petitioners shall pay cost of Rs. 1,000/- to the respondent.
That being aggrieved by the order dismissing the petition, petitioners have preferred this appeal u/s 72(2) of the Copyright Act, 1957.
I have heard the learned Counsels appearing for the appellants and the respondents.
The learned Counsel appearing for the appellants submitted that the material adduced by the petitioners before the Copyright Board clearly
proves that they are the authors of Artistic work ''Prestige'' which was stylized and first used by petitioners in 1981 itself when the said artistic
work was registered under the Patents Act in respect of various products manufactured and marketed by petitioners and the respondent has
imitated and adapted the said artistic work which has created an impression that respondent is associated with petitioners and the artistic work of
respondent could not be registered as it infringes the copyright of the petitioners and no certificate as required under proviso to Section 45 of the
Act was produced and wherefore the copyright registered by the respondent is liable to be revoked and entry to that effect in the register of
copyrights is liable to be deleted. Pie submitted that the finding arrived at by the Copyright Board is perverse and arbitrary and cannot be sustained
and the application filed by the petitioners before the Copyright Board is entitled to succeed and he further submitted that in the alternative the
decision rendered by the Madras High Court in O.S.A. Nos. 103 to 107 of 1997, dated 2-9-1997 has to be incorporated in the Register of
Copyright in order to maintain the purity of the Register.
The learned Senior Counsel appearing for the respondent submitted that in view of the decision of the Madras High Court in O.S.A. Nos. 103
to 107 of 1997 the petitioners have no locus standi to file petition for revocation of copyright registered by the respondent and petitioners and
respondent are operating in different fields and there is no similarity between the artistic work registered by the respondent and that of the
petitioners and respondent''s copyright in artistic work ''Prestige Group'' was registered in 1992 itself and first used by respondent in 1986 and
registration of artistic work of petitioners is later to the registration of copyright by respondent. He submitted that Copyright Board has passed a
very considered order, which does not call for interference in this appeal.
The points that arise for determination in this appeal having regard to the contentions of the parties are;
Whether the Copyright Board was justified in holding that the petitioners have failed to prove that Copyright Registration No. A-51400/91,
dated 25-2-1992 is liable to be revoked/cancelled as sought for in the petition and in dismissing the petition?
Whether the impugned order passed by the Copyright Board dated 2-7-1999 calls for interference in this appeal?
What order?
I answer the points for determination as follows:
In the affirmative;
In the negative;
As per the final order for the following:
REASONS
Points 1 to 3.--These points are considered together since they are interconnected and to avoid repetition.
I have gone through the petition filed before the Copyright Board (hereinafter called ''Board'') and statement of objections filed to the petition by
the respondent and the documents produced by the parties before the Board. Both the parties have not chosen to adduce any oral evidence before
the Board. I have also gone through the order passed by the Board. The finding arrived at by the Board has to be considered in the light of the
material on record, contention of the learned Counsels for the parties, the provisions of the Act and decision of the Hon''ble Supreme Court and
this Court on the subject.
The learned Counsel appearing for the petitioners submitted that application is filed before the Board u/s 50(b) of the Act, which provides for
rectification of Register by Board. On application of any person aggrieved for expunging any entry wrongly made or remaining on the register. He
submitted that the registration of copyright obtained on 25-2-1992 under No. 51400 of 1991 is liable to be cancelled as the same has been got
registered in violation of the copyright of the petitioners and contrary to law and entry which has been wrongly made is liable to be expunged. It is
clear from the averment made in the petition before the Board that petitioners aver that the copyright got registered by respondent is liable to be
cancelled and entry has to be rectified on the following facts:
(i) Trademark ''Prestige'' was originally registered under No. 141602 in Class 21 in the name of Platters and Stampers Limited of England.
(ii) The above said registered trademark was assigned to the first petitioner by deed of assignment dated 4-10-1985.
(iii) The first petitioner has entered into a licence agreement with the second petitioner to use the trademark ''Prestige'' in respect of pressure
cookers, pressure pans, cooking and kitchen utensils.
(iv) The second petitioner changed its name to T.T.K Prestige Limited on 26-7-1994 and the trademark ''Prestige'' also forms a prominent feature
of the corporate name and trading style of petitioners.
(v) Petitioners enjoy exclusive copyright in the artistic work ''Prestige'' in stylized script in white letters placed within red rectangle and said artistic
work was created by Mr. T.T. Jagannathan, Group Managing Director of petitioners in the course of employment.
(vi) The above said artistic work was first published in India in 1985 and has since been published all over India.
(vii) The respondent has made a substantial reproduction of petitioners artistic work by adopting the script in respect of the word Prestige which is
almost identical to the script used by the petitioners and ordinary purchaser would assume that the respondent is associated with the petitioners.
(viii) The respondent has adopted the artistic work of petitioners with a view to pass off respondent''s business and goods as and for the
petitioners'' goods and business and has committed act of passing off and infringement of copyright.
(ix) The registration of copyright by respondent on 25-2-1992 in No. A-51400/91 is contrary to provisions of Section 45 of the Act and hence
liable to be revoked.
When the petitioners have filed a petition for revocation or cancellation of respondent''s registered copyright on the above facts, naturally,
burden would be upon the petitioners to prove the same as they would fail if no evidence is adduced by either side. The petitioners have not led
any oral evidence and apart from the documents produced with the petition have not produced any other documents before the Board to
substantiate their contentions averred in the petition. The records of the Board show that documents produced by the petitioners are as follows:
(i) 11 certificates issued by the Trademarks Registry certifying registration of trademark ''Prestige'' by the second petitioner in respect of various
products on various dates from 16-6-1981 to 5-1-1987.
(ii) Fresh certificate of incorporation consequent on change of name of second petitioner from T.T. Limited to T.T.K. Prestige Limited dated 23-6-
1994 on the basis of letter dated 14-6-1994.
(iii) Extract of the register of copyright dated 1-5-1995 showing registration of following artistic work as copyright. In all the certificates date of the
publication in India is mentioned as 1993 against Column 9.
(a) A-52801/95 in the name of T.T. Limited, artistic work ''Prestige Accura''.
(b) A-52803/95 in the name of T.T. Limited, artistic work ''Prestige Non-stick Fry Pan with dia 200 mm Carton''.
(c) A-52810/95 in the name of T.T. Limited, artistic work ''Prestige-IDLI Stand carton''.
(d) A-52811/95 in the name of T.T. Limited, artistic work ''Prestige Non-stick Fry Pan with dia 250 mm carton''.
(e) A-52812/95 in the name of T.T. Limited, artistic work ''Prestige Sauce Pan carton''.
(f) A-52813/95 in the name of T.T. Limited, artistic work ''Prestige Non-stick Tawa''.
The documents produced by the respondent are as follows:
(i) True copy of the order dated 2-9-1997 in O.S.A. Nos. 103 to 107 of 1997 passed by Madras High Court.
(ii) Copy of certificate of registration bearing No. 51402/91, dated 25-2-1992 showing registration of artistic work of respondent ''Prestige
Group'' against Column No. 9 first publication is mentioned as 1956.
(iii) Certificates issued by Trademarks Registry, dated 2-9-1980 showing registration of trademark Prestige in the name of Razack S. Amin alias
Amin Sattar.
(iv) Memorandum and articles of association of Prestige Estates Projects Private Limited.
I have gone through the contents of all the documents produced by the parties before the Board. It is clear from the same that petitioners have
not produced any documents to prove facts (i) to (iii) referred to above and wherefore has not proved the same.
So far as fact (iv) is concerned, fresh certificate of incorporation consequent upon change of name of petitioner 2 shows that on a letter
addressed dated 14-6-1994 the name of petitioner 2 has been changed from T.T. Limited to TTK Prestige Limited by certificate dated 23-6-
1994 and wherefore said fact is proved.
However, there is no material whatsoever to prove facts (v) and (vi) and wherefore said facts that artistic work ''Prestige'' in stylized script in
white letters placed within red rectangle was created by Mr. T.T. Jagannathan, Group Managing Director of petitioners in the course of
employment and that said artistic work was published in 1985 have not been proved. The contents of the documents produced by the petitioners
would only show registration of trademarks ''Prestige'', ''Prestige'' and ''Prestige Barbecute'' in the name of T.T. (Private) Limited on various dates
from 16-6-1981 to 5-1-1987 in respect of various products and would not in any way help the petitioners to contend that artistic work was first
authored by petitioners'' employee and first published in 1985. The other documents produced by the petitioners would show that petitioners''
artistic works were registered under Copyright Act on 1-5-1995 in the name of T.T. Limited though it had changed its name and according to the
entry against Column No. 7 in all the certificates of registration of copyright meant for mentioning name, address and nationality of the author it is
mentioned as ''T.T. Jagannathan'' and address as in Column No. 2 ''T.T. Limited, Bangalore'' and it is mentioned against Column No. 9 in all the
certificates of registration of copyright of petitioners that year and country of the first publication as ''1993; India'' and wherefore the above said
contents of certificates of registration of copyright would belie the contention that artistic work of petitioners was first published in India in 1985
and the said certificates would clearly show that artistic work of respondents was authored by T.T. Jagannathan and first published in India in 1993
i.e., subsequent to the registration of respondent''s artistic work on 25-2-1992 and it is mentioned in Column No. 9 of certificate of registration of
respondent''s copyright as first published in India in 1986 and wherefore the finding of the Board use of the artistic work by respondent was much
prior in point of time and came to be registered first in point of time is well-founded and unassailable.
The next set of facts averred and required to be proved by the petitioners is facts (vii) and (viii) to show that the respondent has made a
substantial reproduction of petitioners artistic work by adopting the script in respect of the word ''Prestige'' which is almost identical to the script
used by the petitioners and an ordinary purchaser would assume that the respondent is associated with the petitioners and that the respondent has
adopted the artistic work of petitioners with a view to pass off respondent''s business and goods as and for the petitioners goods and business and
has committed act of passing off and infringement of copyright.
Section 16 of the Act reads as follows:
No copyright except as provided in this Act.--No person shall be entitled to copyright or any similar right in any work, whether published or
unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force, but nothing in
this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence"".
Section 13 of the Act states works in which copyright subsists and Clause (a) includes original, literary, dramatic, musical and artistic works.
''Artistic work'' is defined u/s 2(c) of the Act as follows: ""(c) ""Artistic work"" means,--
(i) 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;
(ii) a work of architecture; and (iii) any other work of artistic craftsmanship"".
""Author"" is defined u/s 2(d) of the Act wherein in relation to the artistic work other than a photograph, the artist is the author of the work.
Section 2(a) defines ""adaptation"" and in relation to artistic work ''adaptation'' would mean conversion of the work into a dramatic work by way
of performance in public or otherwise.
Section 2(m) of the Act defines ""infringing copy"" and in relation to artistic work it means reproduction thereof otherwise than in the form of a
cinematographic film.
Section 14 of the Act states as follows:
Meaning of copyright.--For the purpose of this Act, ""Copyright"" means the exclusive right subject to the provisions of this Act, to do or
authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely.-
(a) xxxx
(b) xxxx
(c.) in the case of an artistic work.-
(i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three
dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film; (v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-Clauses (i) to (iv)"".
Hon''ble Supreme Court had an occasion to consider the provision of the Act in the case of R.G. Anand v. Delux Films and Ors . In the said
case a suit was filed against the defendants on the ground that they had violated the copyrighted work of the plaintiff which was a Drama called
''Hum Hindustani'' and that the defendants had adopted the said play into a motion picture ''New Delhi''. The suit was dismissed by the District
Judge. Same was affirmed by the High Court and the Hon''ble Supreme Court also affirmed the order passed by the High Court. However, since
there was no decided case of the Supreme Court on the question of infringement of copyright, Hon''ble Supreme Court has considered in detail the
question of infringement of copyright, the object of the provisions of the Copyright Act and also the factors that are to be borne in mind while
considering the fact that whether there is infringement or violation of the copyright. Hon''ble Supreme Court after referring to the opinion of eminent
authors has observed in paragraph 15 of the judgment by quoting Halsbur/s Laws of England by Lord Hailsham, Fourth Edition as follows:
Moreover, it seems to us that the fundamental idea of violation of copyright or imitation is the violation of the Eighth Commandment: ""Thou shalt
not steal"" which forms the moral basis of the protective provisions of the Copyright Act of 1911. It is obvious that when a writer or a dramatist
produces a drama it is a result of his great labour, energy, time and ability and if any other person is allowed to appropriate the labours of the
copyrighted work, his act amounts to theft by depriving the original owner of the copyright of the product of his labour. It is also clear that it is not
necessary that the alleged infringement should be an exact or verbatim copy of the original but its resemblance with the original in a large measure,
is sufficient to indicate that it is a copy"".
Hon''ble Supreme Court after referring to the learned authors on copyright and also decisions of the Courts has summarised succinctly the
factors to be borne in -mind and has laid down the following propositions:
There can be no copyright in an idea, subject-matter, themes, and in the use of word plots or historical or legendary facts and violation of the
copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.
Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In
such a case the Courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression
adopted in the copyrighted work. If the defendant''s work is nothing but a literal imitation of the copyrighted work with some variations here and
there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which
at once leads to the conclusion that the defendant is guilty of an act of piracy.
One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the
viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to
be a copy of the original.
Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question
of violation of copyright arises.
Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the
intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into
existence.
As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down
by the case-law discussed above"".
In the case of Associated Electronic and Electrical Industries (Bangalore) Private Limited v. Sharp Tools, this Court considered an appeal filed
u/s 72 of the Act wherein also an application had been filed u/s 50 of the Act and the applicant had sought for cancellation of the copyright
registered in favour of the respondent alleging that it had been wrongly obtained or wrongly remained in the register of copyright. In the said case it
was averred that plaintiff had the trademark ''Sharp'' with formidable sale publicity all over India and the same was registered under Trade and
Merchandise Marks Act, 1958 and that the respondent had copied the said mark and registered as ''Sharp Tools''. In the said case this Court has
observed in paragraph 10 regarding the object of the Copyright Act as follows:
Before we go into the question raised by the rival contentions of the parties as to the existence of the copyright and its infringement it is
necessary to state as to what is copyright and the nature of the copyright. According to Sriyuths Copinger and Skone James on Copyright, the
copyright law is in essence concerned with the negative right of preventing the copying of physical material existing in the field of literature and art.
Its object is to protect the writer and artist from the unlawful reproduction of his material. It is concerned only with the copying of physical material
and not with the reproduction of ideas and it does not give a monopoly to any particular form of words. If it could be shown that two precisely
similar works were in fact produced wholly, independently from one another, the author of the work that was published first would have no right to
restrain the publication of the other author''s independent and original work"".
In the case of Associated Electronic and Electrical Industries (Bangalore) Private Limited, referred to above, this Court had laid down the test
to determine whether or not there has been a violation of copyright and has observed as follows:
One of the surest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator, or the viewer after
having read or seen both the works would be clearly of the opinion and get an unmistakable impression that the subsequent work appears to be a
copy of the first. In other words, dealing with the question of infringement of copyright of the applicant''s work by the respondent''s work, the
Court is to test on the visual appearance of the object and drawing, design, or artistic work in question and by applying the test viz., ''the lay
observer test'' whether two persons who are not experts in relation to objects of that description, the object appears to be a reproduction. If to the
''lay observer'', it would not appear to be reproduction, there is no infringement of the artistic copyright in the work"".
When the material on record in the present case is considered in the light of the principles laid down in the above cited cases, it is clear that so
far as the registration of copyright and the artistic work of the petitioners and the respondent is concerned, the publication of artistic work of the
respondent as also the registration of the artistic work of the respondent under the Act is first in point of time as the copyright of the artistic work of
the respondent was first published in 1986 and was registered on 25-2-1992 whereas the artistic work of the petitioners was first published as per
the certificate of registration of copyright produced by the petitioners in 1993 and the artistic work was registered under Act on 1-5-1995.
However, what is contended by the learned Counsel appearing for the petitioners, appellants herein is that the word ''Prestige'' had already
been used in a stylized and artistic way by the petitioners and the petitioners had acquired distinctive right over the same and the word that has
been adopted and imitated by the respondent is violation of copyright as the word ''Prestige'' had been registered under the Trade and
Merchandise Marks Act in 1981 itself.
It is well-settled that ideas however original and clever or brilliant cannot be subject-matter of copyright. It is only when the said idea is
reduced to writing in the form of words or in the form of expression such as picture, play, artistic work, the copyright would arise in respect of the
said expression of idea and it is not until it is reduced to writing or manifested into any tangible form, the idea by itself would not be entitled to any
copyright and in view of the provisions of the Act it is clear that there can be no copyright in word or words, but the right can only be in the artistic
manner in which it is written. A copy is that which comes near to the mind of every person seeing it and imitation will be a copy which comes so
near to the object so as to suggest the original in the mind of that person seeing it. Wherefore, having regard to these principles and also the factors
laid down by the Hon''ble Supreme Court and this Court as tests that determine as to whether there is violation or infringement of copyright and as
to whether there is copying, imitation or adaptation of the artistic work of the petitioners by the respondent, the artistic works of the petitioners and
respondent has to be compared. It is clear from the perusal of the artistic work registered under the Act as already held above there is no
comparison whatever between the artistic work of the petitioners and the artistic work of the respondent as the artistic work of the petitioners
registered under the Act is entirely different from the artistic work that is registered by the respondent and in view of the above said finding that first
publication of the artistic work and registration of artistic work by the respondent is first in time as the publication and registration of copyright of
the petitioners was later, question of the respondent copying the artistic work of the petitioners would not arise.
Even otherwise, it is clear that the artistic work of the respondent that is registered under No. A-51402/91, dated 25-2-1992 is ''Prestige
Group'' with photo of a bird in a circle. Whereas, the artistic work of the petitioners what is registered under the Act is in respect of Prestige
Accura, Prestige Non-stick Fry Pan with dia 200 mm Carton, Prestige-Idli Stand Carton, Prestige Non-stick Fry Pan with dia 250 mm Carton,
Prestige Sauce Pan Carton and Prestige Non-stick Tawa. It is clear from the comparison of the artistic work of the petitioners and respondent
registered under the Act that they are not similar and one cannot be said to be copy or imitation of the other. Even the word ''Prestige'' registered
under the Trade and Merchandise Marks Act by the second petitioner for various products would show that they are registered as ''Prestige'',
''Prestige Barbecue'' and the artistic work of the respondent is ''Prestige Group'' with the photo of a bird in a circle and the comparison of the two
works in which they are represented by the petitioners and the respondent would show that there is no similarity in the two works. This Court has
held in the above cited case of Associated Electronic and Electrical Industries (Bangalore) Private Limited, that there cannot be any copyright in
the words, but copyright would exist in the artistic form in which it is written. The facts of the said case were similar to the facts of the present case.
In the said case it was contended by the petitioners in a petition filed u/s 50 of the Act that they were manufacturers of electrical goods over a long
period under the trademark ''Sharp'' and respondent had registered the trademark ''Sharp Tools'' and wherefore there was imitation and this Court
held that on comparison of the two marks they were not similar and confirmed the finding of the Board. In the present case also on comparison of
the artistic way in which the word ''Prestige'' is being used by the petitioners and respondent, it is clear that respondent cannot be held to be guilty
of copying or imitating or adopting the artistic work of the petitioners and the following observations made by the Board in paragraph 9 are well-
founded in view of the material on record:
Apart from this, the perusal of the artistic works of the petitioners and the respondent and a comparison of one with the other would show that
there is absolutely no similarity in the said artistic work. The letters in petitioners'' word are smaller in size and all the letters are vertical, whereas,
the letters of artistic work ""Prestige"" used by the respondent are slightly transverse tilting towards right and letters are more than three times the size
of the letters used by the petitioners. The artistic work used by the respondent is underlined by a thick line. More than anything else, the word
Prestige"" adopted by the petitioners are not uniform at all times apart from the usage in different items, as observed earlier. The word adopted in
the Trade mark Registration of the year 1981 is different from the word used in the different wares or in the latest letterhead. The Counsel for the
respondent further stated that his registered trademark mentions ""Prestige Group"" and as the mark goes, the entire registered matter has to be seen
and not a portion of it. So, applying the test as laid down by the Hon''ble High Court of Karnataka and the observations made above, there is
absolutely no similarity between the artistic work used by the petitioners and the artistic work used by the respondent so that it can be said that one
is copied by the other. This being so, the petitioners'' allegations that the respondent has been deliberately using the same artistic work as used by
them for the purpose of gaining in their trade are not correct"".
Wherefore, in view of the above facts it is clear that the finding of the Board that the petitioners have failed to prove that respondent has
copied or imitated or adopted the artistic work of the petitioners is unassailable.
It is also clear from the material on record that the sphere of activity of the petitioners and that of the respondents are different. The petitioners
are manufacturing and selling kitchen utensils and whereas the respondent is using the word ''Prestige'' as a corporate name as ''Prestige Group''
and wherefore the possibility of respondent infringing upon the activity of the petitioners and passing off the goods and products of the petitioners
would not arise at all. In fact the petitioners had filed O.A, Nos. 364 and 365 of 1995 respectively and in appeals against the order passed in the
said cases in O.S.A. Nos. 103 to 107 of 1997 Division Bench of the Madras High Court by its order dated 2-9-1997 has disposed off the said
original side appeals and it is clear from the perusal of the order passed in the said case which has been produced by the respondent before the
Board that in fact during the course of argument the Counsel appearing for the respondent herein submitted that they are engaged in real estate
business and using the word ''Prestige'' in the name of the trading style and that as on that day they were not engaged in any business that is carried
on by the petitioners herein and in the light of the said submission the learned Counsel who was appearing for the petitioners herein in the said case
submitted that if the word ''Prestige'' is to be used by the defendant (respondent herein) as trading style for carrying real estate business only then
the plaintiff shall not have any objections and under those circumstances High Court of Madras held that the respondent herein who was the
defendant in the said case was at liberty to use the word ''Prestige'' as the name for trading style for the purpose of carrying on real estate business
and the plaintiffs (petitioners herein) shall not object to it and consequently nothing survived in those appeals and accordingly the appeals were
disposed off. Wherefore, it is clear that in view of the above said submissions made by the learned Counsels appearing for the parties in the said
proceedings before the High Court of Madras in O.S.A.-Nos. 103 to 107 of 1997 and the fact that the sphere of activity of the petitioners and
respondent is entirely different, the question of passing off or infringing the trademark would not arise at all.
The learned Counsel appearing for the petitioners submitted that it was specifically averred in the petition before the Board that there was no
compliance of the proviso to Section 45 of the Act and the Board has not at all considered the question and has dismissed the said contention by
holding that it has no relevance. He submitted that the proviso to Section 45 of the Act would be relevant as it is for the Registry of Trademark to
decide as to whether there is infringement of any artistic work.
On the other hand, the learned Counsel appearing for the respondent submitted that the proviso to Section 45 of the Act would not be
applicable to the facts of the present case in view of the different spheres of activity of the petitioners and the respondent and in view of the fact
that there is no similarity in the artistic work of the petitioners and the respondent and that the registration of the copyright of the respondent has
been done in accordance with law and the same has not been shown to be wrong.
Section 45 of the act reads as follows:
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 Copy-rights for entering particulars of the
work in the Register of Copy-rights:
Provided that in respect of an artistic work which is used or is capable for 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 Trademarks referred to in Section 4 of the Trade and
Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trademark identical with or deceptively similar to such artistic work has been
registered under that Act in the name of, or that no application has been made under the Act for such registration by any person other than the
applicant"".
In view of the above said proviso to the section it is clear that the certificate from the Registrar of Trademarks has to be obtained only in
respect of artistic work which is used or is capable of being used in relation to any goods. In the present case, it is the case of the respondent that
the words ''Prestige Group'' is being used as a corporate name of the respondent and is not used in relation to any goods and the submissions
made by the learned Counsels appearing for the parties herein in O.S.A. Nos. 103 to 107 of 1997 before the High Court of Madras would also
go to show that the petitioners have no objection for using the word ''Prestige'' as a corporate name in real estate business by the respondent and
the respondent has no intention of using the word ''Prestige'' in relation to any of the goods which is being manufactured and sold by the petitioners
and wherefore the proviso would not be applicable to the facts of the present case as rightly submitted by the learned Counsel appearing for the
respondent.
Even otherwise, it is clear that when once the artistic work of the respondent is registered as back as 25-2-1992 there is a presumption that
the same has been registered in accordance with law after complying with the provisions of the Act and if there is any non-compliance of the
provisions of the Act, it is for the petitioners to prove the same. Mere averment made in the petition would not prove the fact that there is no
compliance with the proviso of Section 45 of the Act. It is not as if the application filed by the respondent for registration of copyright is within the
exclusive knowledge of the respondent alone. The application given by the respondent has been accepted and registered and a certificate has been
issued by the Registrar of Copyrights and wherefore if the petitioners intended to prove that there was no compliance with the proviso to Section
45 of the Act, the same could have been done by summoning the application filed by the respondent before the Registrar of Copyrights for
registration of copyright and further it is clear that in view of the fact that there is no similarity in the artistic works used by the petitioners and the
respondent and that the sphere of activity is different and there is no likelihood of one infringing upon the activity of other, the contention of the
petitioners that there is no compliance of the proviso to Section 45 of the Act would not assume any importance in view of the above said facts of
the present case and accordingly I hold that there is no merit in the contention of the learned Counsel appearing for the petitioners.
The learned Counsel appearing for the petitioners submitted that if this Court conies to the conclusion that no case is made out for rectification
of the copyright of the respondent, in view of the judgment of the Division Bench of the Madras High Court in O.S.A. Nos. 103 to 107 of 1997,
dated 2-9-1997 an entry may be ordered to be made in the certificate of registration of copyright of the respondent dated 25-2-1992 and also the
certificate of registration of copyright of the petitioners dated 1-5-1995 in respect of various artistic works in order to maintain the purity of register
maintained under the Act as per Section 44 of the Act. He has relied upon the opinion expressed by the learned author P. Narayanan in Law of
Trademarks and passing off wherein it is stated as follows:
21.48 Improper or illegal registration--purity of register.--When the entry made in the register is improper, the Court may order rectification when
its attention was called to the improper entry even though there was no specific pleading to that effect. An illegal entry may be expunged whatever
be the merits or demerits of the applicant moving for rectification. But when the trademark sought to be removed is not itself illegal or improper, the
Court is not bound to act at the instance of an unmeritorious complainant, although registration might have been successfully opposed by some
third party.
In the case of identical marks falling within Section 11(1)(a) of the Act the question of purity of register in the public interest is a primary
consideration as against the question of acquiescence or delay unless the same had caused substantial injury to the party concerned so as to
outweigh the question of public interest. Purity of register and public interest will arise even if the case comes within the protection offered by
Sections 12 and 34"".
He has also relied upon the decision of the High Court of Bombay in Kanshiram Surinderkumar v. Thakurdas Deoomal Rohire, wherein it is
observed as follows:
In the case of identical marks falling within Section 11(a) viz., marks which are likely to deceive or cause confusion the question of purity of
register in public interest is a primary consideration as against the question of acquiescence or delay unless the same has caused substantial injury to
a party so as to outweigh the question of public interest"".
There is no merit in the contention of the learned Counsel appearing for the petitioners in view of the fact that there is no prayer in the petition
filed by the appellants before the Board for entering the remarks that the said certificate of registration is subject to the decision of the Madras High
Court in O.S.A. Nos. 103 to 107 of 1997, dated 2-9-1997. Further, it is clear that the certificate of registration would only contain the particulars
which are required to be mentioned under the Act and the question of this Court directing an entry to be made in the register of copyrights that the
said registration of copyright is subject to the decision of the Madras High Court would not arise in this appeal as there is no direction in the
decision of the Madras High Court itself that an entry should be made in the register of copyrights regarding the said decision and wherefore the
question of issuing any direction to enter the remark regarding decision of the High Court of Madras in O.S.A. Nos. 103 to 107 of 1997, dated 2-
9-1997 in the register of copyrights of the petitioners and the respondent would not arise in this appeal and accordingly I hold that there is no merit
in this appeal as the impugned order passed by the Board dated 2-7-1999 is justified and does not call for interference in this appeal and
accordingly I answer the points for determination and pass the following order:
The appeal is dismissed without any order as to costs.