NOC Of Trademark Office Mandatory For Claiming Copyright Registration Of Artistic Work In Respect Of Goods & Services: Delhi High Court

The Delhi High Court has observed that in order for any person to obtain copyright registration of an artistic work which is being used or is capable of being used in respect of any goods and services, the no objection certificate (NOC) is mandatorily to be obtained under the proviso of sec. 45(1) of the Copyright Act, 1957.

The said proviso states that the application for entering particulars of the copyright work in the Register of Copyrights shall be accompanied by a certificate from the Registrar of Trade Marks to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered or that no application has been made for such registration.

"The purpose behind this provision is to ensure that there is no conflict between labels, packagings, etc. registered or used by trademark owners and registrations granted under the TM Act. The registration of copyright in respect of artistic works is, thus, founded on the basis of the NOC issued by the Trademark Office," Justice Pratibha M Singh added.

The Court was dealing with a plea filed by M/s EK Agencies, sole proprietorship firm of one Mohd Ershad, under sec. 50 of the Copyright Act, seeking rectification of the artistic work titled "ASLI KESRI CHAI".

The case of the Petitioner was that it was involved in the business of trading, packing, marketing and selling tea leaves since 1998 and had been continuously selling tea leaves using artistic work along with the trade mark 'HIGHGRON' since 2015. It claimed that the artistic work 'HIGHGRON', being a label, was registered with the Registrar of Copyrights on 27th February, 2018.

The Petitioner was aggrieved by grant of copyright registration to the Respondent on 21st October, 2019 for its label "ASLI KESRI CHAI". Both the parties applied for grant of no objection certificate under sec. 45 of the Copyright Act and obtained their respective registrations.

The Petitioner had then filed objections with the Registrar of Trademarks seeking withdrawal of the no objection certificate issued to Respondent. The said objections were decided by the Trademark Registrar on 23rd March, 2021 by which the NOC, which was granted to Respondent was cancelled.

An order was also passed refusing the trade mark application of Respondent on the ground that the mark applied for consisted artistic work which is identical to earlier trademarks on record and that there was a likelihood of confusion in the minds of the public.

While it was the petitioner's case that since the NOC issued to the respondent was cancelled, the copyright registration could not stand in its favour, the Respondent argued that review of the order in question was already sought.

The High Court observed that the two competing registrations, which were almost identical to each other, could not be sustained under the Copyright Act and that the respondent's artistic work was a substantial and colourable imitation of the Petitioner's artistic work.

While allowing the petition, the Court ordered that the Respondent shall no longer rely upon the copyright registration. It added that if the review as preferred by the respondent is adjudicated in its favour, then the it would be free to apply for copyright registration.

"It is made clear that insofar as the mark 'ASLI KESARI CHAI' is concerned, Respondent No.3 is free to use the said mark along with any label or artistic work which is not an imitation of the Petitioner's label/packaging for products of its manufacture and sale," the Court ordered.

The plea was accordingly disposed of.

Case Title: MOHD ERSHAD SOLE PROPRIETOR EK AGENCIES v. REGISTRAR OF COPYRIGHTS & ORS

Citation: 2022 LiveLaw (Del) 872

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