In the matter of Manya Vejju v. Sapna Bhog [2023:BHC-AS:37466], a Single Judge (N. J. Jamada, J.) of the High Court of Bombay, vide judgment dated December 13, 2023, held that FIR alleging copyright infringement can render the remedy against threat of legal proceedings infructuous.

Section 60 of The Copyright Act, 1957 states that “Where any person claiming to be the owner of copyright…threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may… institute a declaratory suit that the alleged infringement… was not in fact an infringement..”. The proviso, however, clarifies that “…this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright…”. The question that arises is whether lodging an FIR can be considered an “action” for infringement of copyright, under proviso to Section 60, thereby providing immunity against remedies for groundless threats of legal proceeding.

The Appellant-Defendant, filing the instant appeal against the order of the District Court restraining it from giving groundless threat of legal proceeding alleging infringement, contended that since both civil and criminal remedies are available to copyright owner under Copyright Act, 1957, an FIR should constitute an “action” within the meaning of proviso to Section 60, thereby rendering the instant suit infructuous.

The Respondent-Plaintiff contended that a criminal enforcement action is not an “action” contemplated by the proviso to Section 60. The respondent further submitted that the action contemplated under the proviso to Section 60 must be an action in which there could be effective and complete adjudication which was only possible before the Court.

The Court, while holding that FIR can be considered an “action” as mentioned in the proviso, observed that “Indisputably, the infringement of copyright gives rise to both civil and criminal liability. Where…FIR is lodged with all the particulars requisite for determination of the question of infringement of copyright, which eventually leads to a trial on the question of infringement of copyright, it would be rather difficult to hold that the FIR would not constitute an action within the meaning of the proviso to Section 60…”. The Court, however, clarified that “whether FIR constitutes a threat of groundless action under the main part of Section 60 or constitutes an ‘action’ under the proviso thereto, turns on the facts of the given case”.

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 Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. [2024:DHC:946], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, vide decision dated February 9, 2024, held that the Trade Marks Registrar has no discretionary powers under Rule 50 of the Trade Marks Rules, 2002 (hereinafter, ‘2002 Rules’) and Rule 45 of the Trade Marks Rules, 2017 (hereinafter, ‘2017 Rules’) to extend the time period for filing evidence in an opposition proceeding at the TM Registry.  

Section 21 the Trade Marks Act, 1999 states that “(4) Any evidence upon which the opponent and the applicant may rely shall be submitted…within the prescribed time to the Registrar….” The corresponding Rule 45 of the 2017 Rules require that the Opponent file evidence by way of affidavit “within two months from the service of the copy of the counterstatement…”. Likewise, the corresponding Rule 50 of the erstwhile 2002 Rules require that the Opponent file its affidavit of evidence “within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter”. The issue that arises is, whether the time-period as prescribed under the Trade Marks rules mandatory or the Registrar enjoys discretionary powers to extend the time-period.

The Appellant filed the instant appeal against an adverse order of the Registrar of Trade Marks deeming an opposition filed by the Appellant as abandoned due to delay in service of evidence upon the Applicant. The Appellant, while seeking extension of time for service of evidence, contended that the two-month period for the filing and service of evidence is not a mandatory period. The Respondent contended that the deletion of the clause “unless the Registrar otherwise directs” (which was present in Rule 53 (2) of the Trade Marks Rules, 1959) from the 2002 Rules and the 2017 Rules would mean that the discretion of the Registrar has been taken away.

The Court, while holding that an opposition cannot be ordered as abandoned owing only to delay in service of evidence (which was otherwise filed at TM Registry in time), also held that the time-period prescribed under 2017 and 2002 Rules for filing evidence is strict and mandatory. The Court, while comparing the corresponding provisions under the 1959 Rules, 2002 Rules and 2017 Rules, observed that  “…the discretion, which was vested with the Registrar, has been taken away and the time period for filing of evidence has also been reduced…The above transition and evolution of the Rules points to a clear intention to ensure that strict timelines are prescribed for conclusion of pleadings/evidence in opposition proceedings… extensions cannot be granted, when the time periods are specifically prescribed in the Rules”

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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 ”.

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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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