A.K. Sikri, J,
1. This appeal is filed by appellants M/s. Universal Trading Company under Section 72 (2) of the Indian Copyright Act, 1957 against the order dated 27th February, 1999 passed by Copyright Board. By the said order Copyright Board has allowed the application of the respondent herein for rectification of copyright registration in favour of the appellant in registration Nos. A-30813/80 and A-35887/82 under Section 50 of the Indian Copyright Act, 1957. The events as stated by the appellants which led to the passing of the said order by the Board may be summarised at this stage.
2. The appellants were established on 1st January, 1974 and have been using the trade mark NATRAJ and device of NATRAJ in respect of Mathematical instruments/geometrical boxes and water colour boxes since then continuously, extensively, intensively and openly. The trade mark NATRAJ is registered under Registration No. 324345 dated 6th April 1977 in class 16 claiming user since 1st January, 1974 in respect of mathematical instruments and water colour boxes. The label NATRAJ is also registered under the Indian Copyrights Act in the name of appellants vide Registration Nos. A-30813/80 and A-35887/82. Before registration of Trade Mark “NATRAJ”, it was advertised in the Trade Marks Journal No. 716 dated 1st April, 1979 at page No.1147. The respondent(Hindustan Pencils Pvt. Ltd.) filed an opposition against the registration of Trade Mark “NATRAJ” under opposition No. DEL-2995. The said opposition filed by the respondent was abandoned on 27th February, 1981. After completing the formalities, the said registration certificate of Trade Mark “NATRAJ” under No. 324345 in class 16 was granted to the appellants on 7th March, 1981. The respondent started manufacturing geometrical boxes under the Trade Mark/Label NATARAJ first time in the year 1982. Feeling aggrieved with the use of the mark “NATRAJ” in respect of geometrical boxes, the appellants immediately filed a suit No. 883 of 1982 against the respondent in this Court. On 5th July, 1982, an ex-parte injunction was granted against the respondent restraining them from using the Trade mark NATARAJ and device of NATARAJ in respect of geometrical boxes. On 20th December, 1982 this Court passed a detailed order and restrained the respondents from using the mark and label NATARAJ in respect of geometrical boxes till the disposal of the suit. The respondent filed an appeal bearing No. FAO (OS) 43 of 1983 against the order dated 20th December, 1982. On 6th May, 1983 the said appeal was dismissed by Division Bench.
Aggrieved by the said order, the respondents further filed Special Leave Petition No. 15113/1984 in the Supreme Court on 16th August, 1983 against the said order passed by Division Bench of this Court which was also dismissed. The respondent filed a Cancellation Petition bearing No. C.O. No. 2 of 1983 in this Court against the appellants for cancellation of registered trade mark “NATRAJ” which was also dismissed by order dated 19th October, 1984. Against this respondent filed FAO (OS) 6 of 1985 which was pending at the time matter was heard by the Copyright Board.
3. The aforesaid facts relate to the registration of trade mark Natraj with device of Natraj in favour of the respondent under No. 324345 in class 16 granted on 7th March, 1981. As noted label Natraj was also registered under Copyright Act in the name of appellants vide registration Nos. A-30813/80 and A-35887/82, the respondent filed an application under Section 50 of the Copyright Act for expunging entries in the aforesaid registration. By the impugned order dated 27th February, 1999 the Board has allowed the application of the respondent herein ordering that register of Copy-rights be rectified by expunging the aforesaid entries in favour of the respondent and granted compensatory costs to the respondent herein in the sum of Rs.10,000/- for their agitating the point without any logical ground. This appeal is directed against the aforesaid order dated 27th February, 1999.
4. The learned counsel for the appellants made detailed submissions assailing the aforesaid order of the Board while learned counsel for respondent sought to justify the same in his submissions. It is not necessary to state detailed submissions of the counsel for the parties on either side and to deal with them because of the view which we have taken in the present case. The learned counsel for the appellants had pointed out that although the Board has in para 10 of the impugned order noted the submissions of the appellants herein to the effect that there were differences in the artistic work of the appellants and the respondent and different features were highlighted as is clear from para 10 of the order itself, the Board while recording the findings did not deal with this aspect at all. We find force in this argument of the appellants. In para 10 of the order, the Board has observed that at the time of arguments, appellants herein pointed
out the minute differences in detail some of which are as under:-
Pencil Box of petitioners Geometrical Box of respondent (i) Device of sitting child. Does not contain (ii) Slogan-"writes like a champion Pencils". " (iii)'NATRAJ' in yellow colour In golden lacquer Colour (iv) Not straight lines Straight lines (v) No description Registered Contains such descriptions Trade and Copyright Registration (vi) (R) is written after the (R) is written on alphabet letter 'J' (vii) Word 'NATARAJ' six letters Word NATRAJ (five letters) (viii)Last letter 'J' of the word This letter 'J' is 'NATARAJ' is of equal size exceptionally of bigger size. (ix) Contains "A quality product Contains "Mfrs by Universal from "HINDUSTAN PENCILS LTD" Trading Co., 26/5 Shakti Nagar Delhi. (x) Does not contain the word Contains the word "ORIGINAL" 'original' (xi) Does not contain the words Contains "Satyam, Shivam, "Satyam, Shivam Sunderam". Sunderam" in Hindi Language. (xii)The major background is of There is an impressive panel red colour. of entire blue colour.
5. However, the order thereafter does not deal with this submission. It is the submission of the appellants that artistic work of the appellants appearing on its geometrical boxes is materially different from the respondent appearing on their pencil boxes. The Board has proceeded with the assumption that the work of the appellants is the same as that of the respondent. While concluding this in para 15 of the impugned order, there is no discussion of the various dissimilarities alleged by the appellants in its submissions. It was also pointed out that the Copyright Board failed to deal with yet another important aspect namely prior adoption of device of Natraj by M/s Jai Dayal Kapur Distributing Company. Agreeing with these submissions of the appellants, we set aside the impugned order of the Copyright Board and remand the case back to the Board to decide the same afresh after dealing with various contentions of the appellants herein.
6. We may point out that counsel for appellants had tried to argue that various observations made by the Copyright Board in other parts of the impugned order which are also factually and legally incorrect and Copyright Board had also relied upon unproved documents. On the other hand, it was argued by learned counsel for the respondent herein that the conclusion arrived at by the Copyright Board is correct in law and there was material in abundance to suggest that appellants are not the author of the artistic work in question and the respondent is the earlier registered owner as well as earlier user of the said artistic work which is copied by the appellants. Since we are remanding the case back to the Copyright Board for fresh adjudication of the matter, it would be open to both the parties to make the submissions in respect of their respective cases before the Copy-right Board and we are sure that the Copyright Board would deal with all these submissions while disposing of the application filed by the respondent herein under Section 50 of the Copyright Act.
7. In the result, this appeal succeeds. Impugned order dated 27th February, 1999 passed by the Copyright Board is set aside. Matter is remanded back to the Copyright Board for fresh adjudication. In the peculiar facts and circumstances of this case, we pass no order as to costs.