In the matters of Novex Communications Pvt. Ltd. v. Trade Wings Hotels Limited and Phonographic Performance Ltd. v. Bunglow – 9 & 99 Ors. [2024:BHC-OS:1428], a Single Judge [R.I. Chagla, J.] of the High Court of Bombay, vide judgment dated January 24, 2024, while dismissing the issue raised by Defendants in copyright infringement suits, held that the Plaintiffs, even though not registered as copyright societies, were entitled as owners to grant licenses and seek relief for copyright infringement.

Section 30 of the Copyright Act, 1957 (‘the Act’) states that “The owner of the copyright…may grant any interest in the right by licence…”. Section 33(1) of the Act states that “No person or association of persons shall…commence or, carry on the business of issuing or granting licences in respect of any work in which copyright subsists…except under or in accordance with the registration granted…Provided that an owner of copyright shall, in his individual capacity, continue to have the right to grant licences in respect of his own works consistent with his obligations as a member of the registered copyright society.” The issue that arises is, whether copyright owners can carry on business of granting licences without being registered as copyright societies?

Plaintiffs, Novex Communications and Phonographic Performance Limited, filed suits to restrain numerous hotels, restaurants and malls (Defendants) from using their sound recordings without obtaining a license. The Plaintiffs contended that the scheme of Act recognizes the supremacy of owner’s right to license and an expansive interpretation of the term ‘business’ under the Act would render the copyright owner losing majority of its rights except to licence its right for philanthropy. The Plaintiffs further contended that the prohibition under the Act on conducting the business of granting licenses without registration as a copyright society does not take away an owner’s right to grant licenses in its individual capacity.

The Defendants contended that Plaintiffs, not being registered as copyright societies, were not entitled to grant licenses under the Act. The Defendants further submitted that while an owner has right to issue licenses but when its licensing activity enters the realm of ‘business’, it must do so either through a copyright society or by seeking registration as one.

While deciding the issue, the Court held that Plaintiffs “…have the power as owners to grant interest in the copyright by license under section 30 of the Act irrespective of whether they are carrying on the business of granting licenses or not.” and that they “are entitled to seek reliefs as sought for in the plaint without being registered as a copyright society under section 33(1) of the Act ”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Dr. Reddy Laboratories Limited v. Fast Cure Pharma & Anr. [C.O.(COMM.IPD-TM) 8/2023], Single Judge [C. Hari Shankar, J.] of the High Court of Delhi, by judgment dated September 4, 2023, held that the High Court, within whose territorial jurisdiction the dynamic effect of a registered trademark is experienced by the person aggrieved, is competent to decide the Rectification Petition against the registered mark.

Section 47(1) of the Trade Marks Act, 1999 ( the “Act”) states that “A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made…to the Registrar or the High Court by any person aggrieved …” Section 57(1) of the Act states that “On application…to the High Court or to the Registrar, the tribunal may make may make such order as it may think fit for cancelling or varying the registration of a trade mark by any person aggrieved…”. The question that arises is whether an application for removal of trademark from the Register of Trade Marks and consequent rectification of the register could be filed only before the High Court having territorial jurisdiction over the office of the Trade Marks Registry where the impugned mark was registered.

The Petitioners contended that every High Court is competent to decide a Rectification Petition under Sections 47, 57, and 124. The Defendants contented that only the High Court having the territorial jurisdiction over the concerned Trade Marks Registry office shall have the jurisdiction to decide the Rectification Petition, since the legislature has used a definite article “the” before the expression “High Court”, in both the provisions.

While the Court observed that the expression “High Court” is not defined in the Act, it held that “The power of removal (under Section 47), or of cancellation, variation or modification (under Section 57), of the impugned mark, is undoubtedly conferred, by the statute, both on the Registrar and on the High Court. That does not mean, however, that the geographical location of the Registrar and the High Court must be the same…Thus, though the Registrar, who could exercise jurisdiction under Section 47 or Section 57 would undoubtedly be the Registrar who granted registration to the impugned mark, the High Court which could exercise such jurisdiction would not only be the High Court having territorial dominion over such Registrar, but also any High Court within whose jurisdiction the petitioner experiences the dynamic effect of the registration.”

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In the matter of Tata SIA Airlines Limited v. Union of India[W.P. (C) – IPD 64/2021 & CM APPL. 47831/2019 and 10/2022], Single Judge of the High Court of Delhi [Jyoti Singh, J.], by judgement dated May 25, 2023, dismissed the writ petition and held that a trademark determined by a Court to be well-known will need to be filed through prescribed procedure under Rule 124 of the Trade Marks Rules, 2017 ( ‘2017 Rules’) for registration as a well-known trademark.

Section 11(8) of the Trade Marks Act, 1999 (‘the Act’) states that “Where a trademark has been determined to be well known …by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration…”. Rule 124 states “ (1) Any person may, on an application…,request the Registrar for determination of a trademark as well-known…”. The question that arises is, whether a trademark which has been determined by a Court to be well-known will need to follow the prescribed procedure under the 2017 Rules for seeking registration?

The Petitioner, Tata SIA Airlines Limited, filed a writ petition seeking inclusion of the mark VISTARA in the list of Well-Known Trademarks maintained by the Trade Marks Registry. The Petitioner submitted that, it had requested the Registrar of Trade Marks (‘the Registrar’) to include VISTARA to the list on the basis of a decree of the Delhi High Court declaring VISTARA as a well-known trademark, and this was refused to be acted upon by the Registrar. The Petitioner contended that the Act provides for two different and distinct authorities to determine a trademark to be well-known, viz. the Registrar and the Court, and that the procedure laid down under 2017 Rules only applies in instances where the determination is made by the Registrar. The Respondent, on the other hand, argued that as per the 2017 Rules, any request filed without the prescribed fee and procedure, shall be deemed not to have been filed at all, and even where the determination has been made by a Court, requisite application is required to be filed under the 2017 Rules.

The Court held that “there is no conflict between the provisions…and Rule 124 is an enabling provision for enforcing and giving effect to Section 11(8) after the trademark has been declared to be well-known by a judicial order…It is thus held that even where a trademark is declared to be a well-known trademark by the Court, Rule 124 will apply with respect to the procedure for publication and inclusion…”.

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In the matter of RDB and Co. HUF v. HarperCollins Publishers India Private Limited [CS (COMM) 246/2021] Single Judge [Hari Shankar, J.] of the High Court of Delhi vide judgement dated May 23, 2023, ruling in favour of the Defendant in a copyright infringement suit, held that screenplay of a film is a separate literary work.

Section 13(4) in the Copyright Act, 1957 states “(4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any work in respect of which ora substantial part of which, the film, or, as the case may be, the sound recording is made” [Empasis supplied]. The question considered by the Court was, whether a screenplay of a film can enjoy copyright as a separate work in respect of which a film is made, de hors the copyright held in the film?

The Plaintiff-HUF submitted that the Producer, R.D. Bansal (the Karta of the Plaintiff-HUF), had commissioned Satyajit Raj to write the screenplay of and direct the film ‘Nayak’. The Plaintiff contended that the risk of commercial failure of the film was taken by the Producer to assert that the Producer was the first owner of all direct, indirect, derivative and related rights with respect to the film. The Plaintiff argued that the Defendant’s novelization of the screenplay, upon receiving a license from the heir of Satyajit Ray’s estate, would amount to infringement of the Plaintiff’s copyright. The Defendant, on the other hand, argued that the script and screenplay in respect of which the film was made, is a separate work distinct from the film- the rights of which are owned by Satyajit Ray. The Defendant argued that the Producer, therefore, has no copyright over the underlying works. It was further submitted that the right to novelize the underlying work in a film is a right which is independent of the copyright held in the film itself.

The Court affirmed the arguments placed by the Defendant and held that the copyright over the cinematographic work does not extend to the separate copyright which exists in the screenplay of the film. The Court observed that “Given the ambit of…“literary work”…the screenplay of the film Nayak is unquestionably a “literary work”… Per sequitur, by operation of Section 13(4), the copyright in the screenplay, as a “literary work”…cannot be affected by the separate copyright in the cinematograph film itself…”

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In the matter of Abu Dhabi Global Market vs The Registrar Of Trademarks [C.A.(COMM.IPD-TM) 10/2023], Single Judge [C. HARI SHANKAR, J.] of the High Court of Delhi, via judgment dated May 18, 2023, set aside an order passed by the Assistant Registrar of Trade Marks which rejected the Appellant’s trade mark application for a device mark consisting of the words “ABU DHABI GLOBAL MARKET”. The application was rejected on the grounds that the impugned application was not coined or invented but rather included a geographical name. The Court held that inventiveness was not a pre-requisite for registration and that a mark could not be refused for registration on the ground that it was not coined or inventive.

Section 9(1)(a) of the Trade Marks Act, 1999 states that “The trade marks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person may not be registered.”. The question that arises is whether inventiveness of a trade mark is a criterion of distinctive character?

While refusing the Application (No. 3184380), one of the grounds stated by the Registrar of Trade Marks (“Respondent”) was that the mark was as a whole non-distinctive as it was neither coined nor invented.  With respect to this finding, the Appellant pointed out that the trade name “ABU DHABI GLOBAL MARKET” of the Appellant has been adopted by the Appellant as specifically prescribed under the Federal Laws of United Arab Emirates (UAE). The Appellant also submitted that the device mark was already registered in favour of the Appellants and the mark cannot lose its distinctiveness by mere addition of the words “ABU DHABI GLOBAL MARKET”.

The Appellate Court observed that it does find any requirement for a mark to be “coined” or “inventive” for it to be eligible for registration.It was held that “Distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not”. The Delhi High Court thereby set aside the Assistant Registrar’s order rejecting the trademark application and remanded it to the office of the Registrar of Trade Marks for advertisement and further proceedings.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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