TUCKER FASTNERS LTD. Vs. SOLSONS EXPORTS PVT. LTD.

JUDGEMENT

(1.) THIS is an application under section 50 of the Copyright Act, 1957 for expunction of an entry pertaining to registration No. A -57052/99. Submissions made by the petitioner are summarized in this paragraph. Petitioner claims to be the proprietor of trademark 'POP'. Its trademark registration under No. 157493 dates back to 12th February, 1953 and the same has been periodically renewed. This trademark was first used in India in 1960 and is being continuously used since thereafter. Respondent has made application for registration of trademarks POP KEYS and POP PRO before the Registrar of Trade Marks. Petitioner has filed opposition to the said applications. In the said applications, respondent has made references to its registrations of trademarks POP and POP JAWS. Petitioner has initiated rectification proceedings in relation to those registrations. Respondent too has filed rectification proceedings before the Registrar of Trade Marks in relation to registration number 157493 of the petitioner. In the said proceedings, the respondent has relied upon the impugned registration. Petitioner feels aggrieved since the impugned work is not an original artistic work but is mere imitation of the petitioner's registered trademark. Petitioner is further aggrieved since the impugned registration is capable of being used as trademark on goods and the first respondent trades in goods similar in description to those of the petitioner and the channel of trade for the rival goods are the same. Petitioner alleges that the registration has been obtained surreptitiously since the first respondent was aware about the registration held by the petitioner. Word POP is basic constituent of the impugned work and thus the use of the impugned work will cause confusion and deception. Thus impugned registration is violative of section 45(1) of the Copyright Act, 1957. Any depiction of the work POP differently is not sufficient for the work to be treated as an artistic work. The certificate issued by the Registrar of Trade Marks under section 45(1) of the Copyright Act, 1957 is contrary to its own records. Impugned registration is violative of rule 16 of the Copyright Rules, 1958.

(2.) SUBMISSIONS in the written statement of the respondent are summarized in this paragraph. Respondent has at the outset submitted that the application for registration was filed alongwith the appropriate certificate under section 45(1) of the Copyright Act, 1957 issued by the Registrar of Trade Marks. Respondent has submitted that no power of attorney in favour of Shri R.R. Nair of De Penning and De Penning who has signed the petition has been filed. Hence, petition is violative of Order III, rule 1 to rule 4 of the CPC. Respondent has made various submissions which are relevant for determination of registrability or otherwise of a trade mark in relation to the Trade Marks Act, 1999. Respondent No. 2, Shri Chandrakant V. Solanki, created the work in 1986 and developed the same as author. The said author joined with the respondent No. 1 as a Managing Director and therefore the author has given all the rights of the artistic work to the Respondent No. 1. The said author is the first owner of the artistic work and the first owner of the copyright under the provision of section 17 of the Copyright Act. Respondent has denied the assertions of the petitioner that the impugned registration has been surreptitiously obtained and certificate under section 45(1) of the Copyright Act, 1957 has been wrongly issued.

(3.) PETITIONER in its rejoinder has reiterated its submissions made in the petition and has repudiated the submissions made by the respondent in its written statement. Petitioner has emphasized that the Registrar of Trade Marks, while issuing the certificate under section 45(1) of the Copyright Act, 1957, did not take into consideration the presence of the registration of trade mark POP in favour of the petitioner under registration number 157493 dated 12th February, 1953. Parties from both the sides have strained too much to build up the arguments of their respective cases on the analogy of trade marks disputes. Legislative provisions in the Trade Marks Act, 1999 and the Copyright Act, 1957 are very much asymmetrical particularly in the area of grant of registration of the respective works. Learned counsels from both the sides similarly argued their case depending upon the pleadings as to the deceptive similarly of the work and accordingly dependability of the certificate granted by the Registrar of Trade Marks under section 45(1) of the Copyright Act, 1957. Learned counsel for the petitioner drew our attention to the copy of the power of attorney dated 9th May, 2005 executed by the petitioner in favour of Shri R.R. Nair filed alongwith their letter dated 29th December, 2005 filing the petition. Learned counsel for the petitioner also drew our attention to the fact that there is nothing in the written statement of the respondents and the arguments of the learned counsel for the respondent to show that an assignment in writing as stipulated under section 19 of the Copyright Act, 1957 was executed by the respondent No. 2 in favour of respondent No. 1. In matter of registration under the Copyright Act, 1957, it is highly relevant to go into the veracity of the person making application for registration. As per extracts from the certificate of registration, M/s. Solsons Exports Pvt. Ltd., respondent No. 1 herein made the application for registration as owner of the artistic g work. Name of the author described by them is Shri Chandrakant v. Solanki, respondent No. 2 herein. The year of first publication of the artistic work claimed by them is 1986. The following submissions in the written statement of the both the respondents are relevant in this regard: - -