JUDGMENT
Raghbir Singh, Chairman
1. This is an application under Section 50 of the Copyright Act, 1957 (14 of 1957) (in short hereinafter referred to as “the Act”) for expunging the entry in the Register of Copyrights under No. A-66314/2004 registered in favour of the respondent on the ground that it was wrongly made and remaining in the Register.
2. The case of the petitioner briefly is that they are a registered co-operative society. They started functioning from 1978 and they are also engaged in the business of manufacture and sale of safety matches. The picture affixed on these match boxes include three birds sitting on the branch of a tree and four birds sitting on the branch of a tree with word marks ‘WE THREE’ and ‘WE FOUR’ respectively. The said trade names and labels were used by them from 1983 onwards and were approved by the Central Excise Authorities from time to time. The petitioner received a legal notice dated 20.6.2001 from the respondent alleging infringement of their trade mark ‘WE TWO’. Petitioner sent a reply denying all allegations and controverting all contentions. The respondent filed a complaint before the Deputy Inspector General of Police, Kannur under Section 63 and Section 64 of the Act and Section 420 of the Indian Penal Code alleging violation of copyright of their mark. Three of the petitioner’s distributors were arrested and large quantities of match boxes were seized and those persons are being criminally prosecuted. The petitioner filed a writ petition before the Kerala High Court seeking direction to the police to refrain from harassing the petitioner and interfering with the business affairs of the petitioner and their dealers. The respondent were also made a respondent in that writ petition. The respondent filed a counter affidavit in matter of the writ petition claiming that the label “WE TWO” is being registered under the Copyright Act, 1957. The petitioner could know at that stage only that the mark is registered under the Act. The petitioner have contended that the respondent have secured registration by suppressing material facts and misleading the registering authority. The registration has been secured in violation of the provisions of proviso to Section 45 of the Act. The picture of two birds sitting on a branch of a tree is a common picture lacking any element of originality. This picture is common as well as it has a limited way of expression. Hence, it can be claimed as an idea not registrable under the Act. Petitioner is using the trade mark as well as the trade label ‘WE THREE’ and ‘WE FOUR’ since 1983. Barring a legal notice dated 20.6.2001 about the infringement of trade mark to which an appropriate reply was sent without any further action on the part of the respondent, no objection on the ground of violation of copyright has been sent so far. Different producers of match boxes commonly use the picture of birds representing a family to create an image of household products. Hence, there being no originality, nobody can claim monopoly through copyright over these pictures. The petitioner, to conclude, have submitted that the respondent on finding that the action based on trade mark will not lie against the petitioner have dishonestly obtained registration through concealing all these facts.
3. Respondent in their written statement submitted that the respondent and their predecessors in business have been engaged in the business of manufacturing and marketing match boxes for last several years. They and their predecessors in business have been using artistic trade mark label consisting and containing of device of ‘TWO BIRDS’ sitting on a stem of a tree encircled in a distinctive circle under the title ‘WE TWO’. They have been using that label since 1956 continuously and uninterruptedly to the knowledge of the petitioner. The artistic work of the label, design get up, with distinctive drawing of birds sitting on a stem in circle has been designed much prior to the petitioner’s claim of adapting of their trade mark labels in 1983. The respondent rebutted the contentions of the petitioner generally and specifically contended that the labels/trade mark ‘WE THREE’ and ‘WE FOUR’ are pure reproduction of trade mark/label ‘WE TWO’. Even if the petitioner have produced their labels in 1983, the same is much later to the label of the respondent which existed in 1956 and was registered under the Trade Marks Act and was assigned to them by their predecessors in business. Respondent concluded that the petitioner are not justified in seeking rectification of the impugned registration.
4. The High Court of Kerala in the above matter vide their order dated 14th March, 2006 directed this Board to consider and pass orders in accordance with law on the application of the petitioner pending with this Board for the expunction of entry in the Register of Copyright expeditiously, at any rate, within a period of two months from the date of receipt of a copy of their above referred judgment. The respondent and the petitioner were directed by this Board vide letter dated 8.5.06 to file the written statement and rejoinder respectively and the list of witnesses and documents within the time frame referred to in that letter. Accordingly, the sitting of the Board was fixed for 16th June, 2006 at New Delhi. Counsel for the respondent filed the written statement on that date. Counsel for petitioner sought adjournment to facilitate him filing the rejoinder which was allowed. The matter was taken up as first item in the hearing of the Board held on 27th June, 2006 at New Delhi. Counsel for petitioner chose not to file any rejoinder.
5. Learned Counsel for the petitioner contended that the respondent in his written statement has mentioned his user of the trade mark dating back to 1956 whereas the evidence produced, being excerpts from the Trade Mark Journal dated 1.3.1955, mentions the date as 29.10.1954 in favour of K.P.A.T. Dharma Raj Nadar and others trading as Sri Krishna Match Works. He submitted that, in any case, the evidence in the name of these persons, being predecessors in interest of the respondent, is in relation to registration of trade mark and is of no relevance in relation to rights relating to copyright. He submitted that the respondent has not claimed originality of the mark. Rather, in para 2 of the written statement, the respondent has put emphasis upon distinctiveness of the mark which is of more significance in matter of trade marks. Learned Counsel did not press for the contention of the petitioner as to non-compliance of the provisions of proviso to Section 45 of the Act by the respondent. Learned Counsel argued that the petitioner was very much an interested person in the subject matter of the copyright which the respondent got registered. In view of this, it was mandatory for him to give a notice to the petitioner about his proposed application for registration which he has concealed with a mala fide intention.
6. Learned Counsel for the respondent made certain preliminary submissions in the nature of that the petitioner is not the aggrieved person in terms of Section 50 of the Act and arguments made by the counsel for the petitioner are beyond pleadings. Learned Counsel submitted that the petitioners were not entitled to a notice under Rule 16 (3) of the Copyright Rules, 1958 since they were the infringers. He mentioned that there is no conflict in the year of user mentioned as 1956 in the written statement and the date 29.10.54 mentioned in the Trade Mark Journal extracts whereof were submitted in evidence. 29.10.54 is the date of trade mark application and consequently the date of registration of trade mark. The trade mark user in the instant case may be “proposed to be used” which would have been 1956 as mentioned in the written statement. He submitted that the mark meets all the requirements of artistic work and originality as provided under Section 2(1)(c) and Section 13(1)(a) of the Act. He drew our attention to the trade label ‘WE THREE’ appended to the letter dated 7.1.1983 addressed to the petitioner by the Office of Central Excise, Quilon Range submitted by the petitioner in evidence. He drew our attention to the certificate submitted by the respondent in evidence issued by the Registrar of Trade Marks in pursuance of the request of respondent in Form TM60 to meet the requirements of proviso to Sub-section (1) of Section 45 of the Act. In reply, the learned Counsel for the petitioner reiterated the submissions made by him earlier.
7. In order to appreciate the arguments of both the parties, it may be necessary to discuss the relevant law on the subject. Section 45 of the Act provides for the manner of making entries in the Register of Copyrights. Sub-section (1) of Section 45, besides providing for the manner of making application to be in the prescribed form and accompanied by the prescribed fee under rules, provides that in respect of an artistic work which is used or is capable of 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 Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958, to the effect that no trade mark 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 that Act for such registration by, any person other than the applicant. Rule 16 of the Copyright Rules, 1958 provides for the manner of making application for registration. Sub-rule (3) of that rule provides that the person applying for registration shall give notice of his application to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant to it. Sub-rule (3), before its amendment in 1992, provided that the person applying for registration shall simultaneously send a copy of the application to every other person interested in the copyright of the work.
8. Provisions of registration under Copyright Act, 1957, unlike similar provisions under the Trade Marks Act, 1999 or its earlier version, namely, the Trade and Merchandise Marks Act, 1958, place a heavy burden upon the applicant to comply with. Every registration under law relating to trade marks is done after public notice and giving an opportunity of hearing to the persons opposing the registration. The Copyright Act, 1957 also envisages that the opponents, namely, the persons claiming or having any interest in the subject-matter of the copyright or disputing the rights of the applicant shall be heard. However, it puts burden upon the applicant under proviso to Sub-section (1) of Section 45 to give a statement accompanied by a certificate from the Trade Marks Registrar about his rivals in trade to the effect that no trade mark identical with or deceptively similar to his artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant. Further, Sub-rule (3) of Rule 16 of the Copyright Rules, 1958, as further strengthened through an amendment in 1992, casts a heavier duty upon the applicant to put his trade rivals to notice in the matter. Para 2, read with paras 5 and 6, of Form IV (Application for registration of copyright) take the duty cast under Sub-rule (3) of Rule 16 to be performed by the applicant steps ahead.
9. The petitioner in his petition have submitted that the respondent served a legal notice dated 20.6.2001 alleging infringement of their trade mark ‘WE TWO’. Respondent have filed complaint before the police authorities at Kannur under Sections 63 and 64 of the Copyright Act and Section 420 of the Indian Penal Code alleging violation of copyright in their mark. Petitioner filed a writ petition before the High Court of Kerala wherein the respondent was made a respondent in that writ petition. The respondent filed a counter affidavit in that write petition in which they claimed that the label ‘WE TWO’ is being registered. Respondent in their written statement and the learned Counsel for the respondent in their submissions before the Board have not controverted the above facts. Learned Counsel for the respondent submitted that the petitioner, being an infringer, is not entitled to a notice under Sub-rule (3) of Rule 16 of the Copyright Rules, 1958. Petitioner is necessarily an aggrieved person since the respondent have initiated criminal proceedings against him based upon their impugned copyright registration. There is nothing in the arguments of the learned Counsel for the petitioner which is beyond the pleadings of the petitioner.
10. Respondent by making statement as required under proviso to Sub-section (1) of Section 45 of the Act and obtaining necessary certificate from the Registrar of Trade Marks have fulfilled the relevant statutory duty cast upon them in that regard. Provisions under Rule 16 (3) of the Copyright Rules, 1958 are of mandatory nature and require literal compliance. The argument of learned Counsel for respondent that an infringer is not entitled to the benefit of Rule 16 (3) necessarily implies that he is to be deemed to be a person not interested in the subject-matter in matter of that rule. An opponent is necessarily a person interested in the matter in an adversial system of dispensation of justice. This Board has repeatedly emphasized the mandatory requirement of Rule 16(3) of the Copyright Rules, 1958 See Kwality Ice Cream Pvt. Ltd v. India Hobby Centre (P) Ltd. 1993 PTC 29 and Hindustan Pencil Private Ltd. v. Universal Trading Company 1999 PTC (19) 379. Respondent has intentionally not given the requisite notice under Rule 16(3) to the petitioner and has accordingly further made wrong submissions in his application for registration under paras 2, 5 and 6.
11. In view of the above, we allow the petition for expunging of entry under No. A-66314/2004. No order as to costs.