HC: The Copyright Registration of the artwork is immaterial for the purpose of proving the use of a trade mark.

On January 21, 2019, the Delhi High Court in the case of M/s Kushi Ram Bihari Lal v. M/s Jaswant Singh Balwant Singh, W.P.(C) 7983/2012 & CM APPL. 19969/2012, decreed that the Copyright Registration of the artwork of “TRAIN” brand is immaterial for the purpose of proving the use of the subject trade mark.

The impugned order had challenged an order passed by the Intellectual Property Appellate Board (IPAB) and upheld the rejection of the Petitioner’s application to register its trade mark “TRAIN” in class 30 of the IV Schedule of the Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks in 1993. The Petitioner had been using the trade mark “TRAIN” with the device of train to sell its rice.

The facts of the case is as follows:

In 1978, M/s Khushi Ram Behari Lal (Export Division) was established with the objective of conducting business in processing, marketing and exporting of rice and the samewas sold under the trade mark ‘TRAIN BRAND WITH DEVICE OF TRAIN’.
In 1996, the name of M/s. Khushi Ram Behari Lal Ltd. was changed to be M/s. KRBL Ltd.
Then the Petitioner filed an application for its registration in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of trade marks in 1993.
The Respondent filed a notice of opposition on the grounds that it was also engaged in the business of Rice under the trade mark “TRAIN” which was registered since 1983.
The Registrar, taking into account that the Respondent had already got the trade mark registered, dismissed Petitioner’s Form TM-16(an application to request for correction of clerical error or for amendment) and refused the application for registration of the said trade mark.
Aggrieved by the order, the Petitioner approached the IPAB which dismissed the appeal on the ground that the Respondents had adopted and registered the trade mark prior in point of time. The IPAB relied upon the Copyright Registration of Respondent over the artwork ‘Train’ to establish its usage by the Respondent and thus held that Petitioner’s registration plea was against Section 9 (which states absolute grounds for refusal of registration), Section 11 (which states relative grounds for refusal of registration) and Section 18 (which states the procedure for application for registration of marks) under the Trade Marks Act, 1999 (‘the Act’).

But the High Court allowed the petition on the following grounds:

As per Section 11(2) of the Act titled ‘A trade mark which is identical with or similar to an earlier trade mark’. The fact that the IPAB had not only ignored Respondent’s registration that it was only for the word ‘TRAIN’ whereas the petitioner’s subject matter trade mark is a label mark having several distinguishing features. Hence, it is not hit by Section 11 of the Act.
Section 12 in The trade marks Act, 1999 reads as follows:

12. Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.

The petitioner’s subject matter trade mark under registration has been in use for almost 22 years without any interruption and there has been no confusion and deception reported by the respondent. The respondent has positive knowledge of the use of the subject matter trade mark by the petitioner since 1990. Hence, it can be an exception for Section 12 of the Act.

The Appellate Board was wrong in holding the objection under Section 18 of the Act on the basis of alleged proprietary rights of the respondent in addition to their trade mark without appreciating the fact that that the petitioner has filed sufficient documents over subject matter trade mark. And the Appellate Board had ignored the fact that the Respondent tried to prove the use at the time of his registration by forged and fabricated documents.
Goodwill and reputation attached – The goods of the petitioner bearing the subject matter trade mark is highly demanded not only in the domestic but also in international markets viz. Reyadh, Dubai, Jeddah, Dammam, Saudi Arabia etc. on account of their superior quality, on the other hand the respondent is admittedly a dealer/commission agent based in Amritsar.

It thus decreed, observing that the registration of the impugned trade mark fulfilled the requirement for registration as prescribed in the Act and the Court held that the Petitioner was entitled to the benefit of Section 12 of the Act for concurrent registration.

Takeaways:

Under Section 12 of the Act, Concurrent uses of trade marks can be allowed upon proper scrutiny of the license and usage of trade mark by the Registrar. Some of the cases where this has been allowed are- Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another, FAO (OS) No. 118/2009, Satilila Charitable Society v Skyline Educational Institute, FAO 213/2003 and FAO (OS) 212/2003, 6 October 2004, Delhi High Court, and Dr. Reddy’s Laboratories Ltd v M/s. Reddy Pharmaceutical Limited, IPAB ORDER 232/2013.
The law pertaining to honest concurrent use was laid down in Kores (India) Ltd v M/s Khoday Eshwarsa and Son, (1984) Arb LR 213 (Bom) in relation to Section 12(3) of the Trade and Merchandise Marks Act, 1958. It was held that the following facts are required to be taken notice of while determining the registrability of a trade mark under the said provision and we have analysed the facts of the present case with the standards set set in the Kores case as follows:
1. The honesty of the concurrent use- The mark has been used by the Petitioner honestly and concurrently for more than 20 years, unlike the Respondent.
2. The quantum of concurrent use of trade mark shown by the petitioners having regard to the duration, area and volume of trade and to the goods concerned. The Petitioner even though had filed for trade mark in 1993 had been consistently using the trade mark since 1978 and the Respondent had registered but rarely used the trade mark since 1983.
3. The chances of confusion resulting from the similarity of the applicant’s and opponent’s trade marks, as a measure of the public interest or public inconvenience. Until the Registrar issued the notice about the trade mark, the court found that there had been no confusion about the same.
4. Whether any instances of confusion have in fact been proved, and nothing was proved as per facts of the case.
5. The relative inconvenience that may be caused to the parties concerned. This also was negated as no evidence of such inconvenience had to come to light as per the facts of the case.

The High Court through this case decreed that Copyright Registration of the artwork of “TRAIN” brand is immaterial for the purpose of proving the use of the subject trade mark. Some cases with similar issue before the Supreme Court as cited by the High Court is in case of Corn Products Refining Co. v. Shangrila Food Products Ltd AIR 1960 SC 142 and in case of Gandhi Scientific Company v. Gulshan Kumar 2009 (40) PTC 22 (Del.).