Delhi High Court Cancels ZOOOK Copyright Registration Secured Through a Flawed Trade Marks Search Certificate

By Vikrant Rana and Huda Jafri

INTRODUCTION

The Delhi High Court has cancelled a copyright registration granted for a packaging label bearing the mark ZOOOK, holding that the registration was procured on the strength of a trade marks search certificate that was inaccurate and contrary to the Register of Trade Marks. The decision, rendered in a petition filed by Fortune Marketing Private Limited against Gujarat Pesticides and the Registrars of Trade Marks and Copyright[1], is a reminder that the statutory bridge between the Copyright Act, 1957 and the Trade Marks Act, 1999 is not a mere formality and that a defective search certificate can unravel a copyright registration built upon it.

The case arose out of a long running dispute between Fortune Marketing, the registered proprietor of the ZOOOK marks used on electronic goods, and Gujarat Pesticides, which had repeatedly attempted to secure trade mark protection for a similar mark on plant care products before turning to the copyright route for its packaging.

BACKGROUND

Fortune Marketing has used the coined word ZOOOK, along with a distinctive device mark, since 2013 and holds a series of registered trade marks across multiple classes, as well as a copyright registration in its ZOOOK logo. In 2019, Gujarat Pesticides filed a trade mark application in Class 1 for a device mark that subsumed the word ZOOOK. Fortune Marketing opposed the application, and Gujarat Pesticides eventually withdrew it in December 2022.

Within days of the withdrawal, Gujarat Pesticides filed two fresh applications, again in Class 1, for a word mark ZOOOK and a label mark comprising a pink packaging design bearing the same word. Both applications were opposed by Fortune Marketing and remain pending.

 
The sequence of filings by Gujarat Pesticides, summarised below, was significant to the Court’s eventual finding that the copyright route was being used to achieve indirectly what could not be achieved through trade mark registration.

Separately, Gujarat Pesticides applied to the Registrar of Trade Marks for a search certificate under Section 45(1) of the Copyright Act, 1957, a document required before the Copyright Office will register an artistic work capable of use on goods or services. The provision is designed to ensure that copyright is not used to secure protection for a mark that conflicts with an existing trade mark. An examination report issued in March 2023 had specifically flagged Fortune Marketing’s registered ZOOOK device mark as a conflicting mark, yet the search certificate eventually issued in October 2023 stated that no identical or similar mark existed on the Register. On the strength of that certificate, the Registrar of Copyright granted registration for the packaging artwork in April 2024, prompting Fortune Marketing to petition for its cancellation under Section 50 of the 1957 Act.

THE COURT’S FINDINGS

Gujarat Pesticides resisted the petition principally on two grounds: that Fortune Marketing was not a “person aggrieved” under Section 50 since copyright and trade mark protection operate under distinct statutes, and that the artistic work was original and targeted a different class of goods, so no confusion could arise.

The Court rejected both contentions. Relying on its earlier decision in Marico Ltd. v. Mrs. Jagit Kaur[2], it reiterated that although copyright and trade mark rights arise under different statutes, the two can overlap where the artistic work sought to be registered is also used as a label or packaging mark, which is precisely why the proviso to Section 45(1) requires a search certificate in the first place.

The Court held that the facts were, in its words, “covered on all four corners” by its decision in Hugo Boss Trademark Management GMBH and Company KG v. Sandeep Arora[3], where a copyright registration built on a label that subsumed a well known trade mark was similarly cancelled. The proviso to Section 45(1), the Court explained, exists to stop parties who have failed to secure trade mark registration from achieving the same result indirectly by registering a near identical label as an artistic work.

On the facts, the Court found that the search certificate issued in October 2023 was plainly inconsistent with the Registry’s own examination report from seven months earlier, which had cited Fortune Marketing’s registered device mark as a conflicting mark. Gujarat Pesticides had not adequately addressed that objection in its reply, and the Registrar of Trade Marks could offer no explanation for issuing a clean certificate despite the unresolved conflict. Since the copyright registration rested entirely on that certificate, the error was fatal to it.

The Court also found a separate procedural defect. Rule 70(9) of the Copyright Rules, 2013 requires an applicant to notify any person who has an interest in, or disputes rights over, the subject matter of the artistic work. Gujarat Pesticides was fully aware that Fortune Marketing had opposed its related trade mark applications, yet it never notified Fortune Marketing of the copyright application, depriving it of the opportunity to object before registration was granted.

On these two findings, both the search certificate and the copyright registration were set aside, and the matter was remitted for fresh consideration from the stage of the original examination report, with both parties to be heard afresh within four months. The Court expressly declined to express any view on the ultimate merits of Gujarat Pesticides’ entitlement to the registration.

KEY TAKEAWAYS

For Trade Mark Owners

1. Monitor not only trade mark applications filed by a rival but also copyright applications for labels or packaging, since the copyright route is sometimes used after a trade mark application has failed or been withdrawn.
2. Where a conflicting mark has been cited in a trade marks examination report, track the outcome of that objection closely, since an inaccurate downstream search certificate can otherwise go unnoticed until a copyright registration has already issued.

For Applicants Seeking Copyright in Labels and Packaging

3. Ensure that any reply to an examination report addresses every conflicting mark that has been cited, since an unanswered objection can later be treated as fatal to a search certificate and any registration obtained on its basis.
4. Comply strictly with the notice requirements under Rule 70(9) of the Copyright Rules, 2013 wherever a competing claimant is known, since a failure to notify can independently vitiate the registration regardless of the merits of ownership.

CONCLUSION

The decision underscores that the interface between copyright and trade mark law is an active area of scrutiny for the Delhi High Court, and that the safeguard built into Section 45(1) of the Copyright Act, 1957 will be enforced with real consequence where it is not properly observed. Brand owners facing a rival who has been unsuccessful on the trade marks register would do well to keep a watchful eye on the copyright register as well.

[1] Fortune Marketing Private Limited v. Gujarat Pesticides & Ors., C.O.(COMM.IPD-CR) 24/2024, High Court of Delhi, decision dated 29 May 2026 (Jyoti Singh, J.), 2026:DHC:4850.

[2] 2018 SCC OnLine Del 8488.

[3] 2023 SCC OnLine Del 7956.