June 02, 2018

India: Delhi High Court on Original work under Section 13 of the Copyright Act

 

Source: www.delhihighcourt.nic.in


Introduction

Copyright is a legal right which provides protection to the original creations of human mind and intellect. Artistic work is a form of work over which copyright is available. The word “artistic” is commonly thought of pertaining to a painting or a sculpture, however, there are various other forms which are recognized by the Copyright Act, 1957.

Section 2(c) of the copyright act defines “artistic work” as,

  • 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;

  • a work of architecture; and"

  • any other work of artistic craftsmanship;

Therefore, to qualify as an artistic work, the work need not possess high quality of art. A work can be artistic even with de minimus artistic quality. However, the work must be an original expression of thought i.e. the work must have “originality” to qualify as an artistic work under the Copyright Act. The expression in the work should be the result of application of skill and judgement on the part of the artist creating the work, that is, the artist must have applied more than some mere mechanical exercise in order to create the work.

Recently, the Delhi High Court in the case of, Marico Ltd vs. Mrs. Jagit Kaur, has allowed the rectification application of Marico Ltd (hereinafter referred to as the “Appellant”) holding that the artistic work for the label of Mrs. Jagit Kaur (hereinafter referred to as the “Respondent”) “NIHAL UTTAM” is not an original work under section 13 of The Copyrights Act, 1957. It was held that the Respondent’s said label is a substantial reproduction and a colorable imitation of the Appellant’s "NIHAR COCONUT OIL".

Brief Facts

  • The Appellant’s trademark “NIHAR” has been registered in India since 1994 and has been in use for several years with respect of coconut oil and the label that has been used, has the primary colour scheme of green, yellow and white with the representation of two coconut trees. Over the years there were certain amends but the basic structure and the colour scheme remained the same.

  • In 2008, the Appellant came across the Respondent’s copyright registration. It was alleged that the copyright as an “artistic work” was first published in 2002 whereas it was registered in the year 2003.

  • It was further alleged that the Respondent’s copyright had several similarities with the Appellant’s label.

  • Thus, an application had been preferred by the Appellant to the Copyright Board under Section 50 of The Copyrights Act, 1957, seeking rectification i.e. removal of the Respondent’s registration from the Register of Copyrights.

  • The rectification petition was dismissed on April 21, 2008 and the present appeal assails the said order.

    The Labels of the two Marks are as follows-

    (APPELLANT’S LABEL)

    (RESPONDENT’S LABEL)

Issues

  • Whether the Respondent’s copyright is an “original” artistic work?

  • Whether the Appellant is entitled to having the Respondent’s copyright removed on the grounds of it being similar to the label?

Copyright Board’s Observations

  • It was observed that the allegation of copying is in a very general form and no specifics of the attributes of copying have been explained.

  • It was further observed that the words “NIHAR” & “NIHAL” owe their roots to different languages having distinct meanings. “NIHAR‟ is a word of Sanskrit origin, whereas “NIHAL‟ owes it’s origin to Persian.

  • It was stated that arguments in the nature of class of goods and nature of business of the Petitioner and Respondent being similar and so there being degree of confusion and deception have a prominent role in determining a matter relating to the rights of a trade mark. In matter of copyright, lackness of the originality of the work is the touchstone.

Appellant’s Contentions

  • The Appellant claimed that the comparative features of the two labels are so similar that "NIHAL UTTAM" label can safely be termed as colorful imitation or substantive reproduction.

  • It was claimed that the color scheme between the two labels is the same

  • It was further claimed that the manner in which the coconut tree is arranged is the same, the arrangement of two broken coconuts is similar.

  • It was contended that due to the long user in the market, the Appellant’s label was quite extensively used and hence the Respondent had access to the Appellant’s label. Evidence was presented by the Appellant in the form of various documents to support the contention.

Evidence

Respondent

The proviso to Section 45 states that before an application of copyright registration in artistic work is allowed, a no objection certificate has to be obtained from the Registrar of Trademark. The same has been submitted by the Respondent.

Appellant

The following evidence has been submitted in the form of documents-

  1. Copies of packaging of TATA NIHAR since 1995

  2. Economic Times dated 27th April, 2002 about the market share of TATA NIHAR.

  3. Deed of assignment dated 10th September, 1997 between Ajit Upasham, and the predecessor of the Appellant assigning the copyright to the Appellant’s predecessor.

  4. Second deed of assignment dated 25th August, 2001 for several variations of NIHAR label.

Court’s Decision

  • The Court observed that a perusal of the labels clearly shows that the Respondent’s artistic work "NIHAL UTTAM" is not an original artistic work but an imitation of the Appellant’s label. The Respondent's label is a substantial reproduction and a colorable imitation of the Appellant’s "NIHAR COCONUT OIL". The Appellant is thus a person aggrieved and is entitled to maintain the petition under Section 50 of the Copyright Act 1957.

  • The Court in the order stated that the color scheme between the two is same, further the manner in which the coconut tree and the broken coconuts are placed is the same.

  • The documents submitted by the Appellant sufficiently show that the label was available earlier in the market. The Appellant’s products were openly advertised and have substantial sale in the market. Clearly the Respondent is in a position to know about its existence and copy the same.

  • It further held, that the Copyright Board was concerned with the artistic features in the label and not the trademark, hence, the rejection of the rectification application on the ground that the words are from different origin is contrary to law.

  • Thus, the appeal is allowed.

Opinion

The Court, in this case, has reiterated the qualification for a work to be artistic i.e. original thought. This is one of the aspects of copyright in the absence of which the same may not be registered. The case thus provides that lack of originality is the touchstone of rectification petition. The Court held that “any entry made of a work which is not an original work would be an entry wrongly made in the Register”. This implies that similarity with an already existing trademark, provides an important basis for rectification of copyright register thereby cancelling the registration of the said artistic work.

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