The Delhi High Court, in a recent judgment, dismissed a rectification/ cancellation application for the artistic work 
. Mohd Shakir (“the petitioner”) applied Section 50 of the Copyright Act, 1957 (“the Act”) for the rectification/cancellation of the artistic work titled “MYA” registered under No. A-120894/2017 with authorship claimed by Mr. Amit Gupta, M/S Gopal Traders (“Respondent No. 1”). The matter was initially filed before the Intellectual Property Appellate Board and was subsequently transferred to the Delhi High Court.
The petitioner claimed to be the originator, owner, inventor, proprietor and creator of the label mark/artistic work 
and an applicant of the pending device mark 
filed in Class 34 dated September 06, 2022.
Respondent No. 1 is the registered proprietor of the device mark under No. 1521433 in Class 31 for scented supari, sweet supari, mouth fresheners, pan masala and pan chutney claiming use since April 2010 and in Class 35 for services relating to distribution, trading and marketing of paan, sweet supari, smoking articles etc.; and in Class 39 for transportation, packaging and storage of smoking articles, hukka, pre-rolled smoking cones, cigar, cigarettes, tobacco products, etc. Respondent No. 1 is also an applicant/ proprietor of several variants of the trade mark MYA against which the third party had filed objections/rectifications.
The third party is Mr. Youssef Anis Mehio of Al Zarif, Rachid Nakhle Street, Mehio Building, Beirut, Lebanon and Mya International Sal Off Shore of Zarif-Rashid Nakhleh, Str-Mehio Bldg-Beirut (“Third Party”) who, since 2005, is the registered proprietor of the device trade mark MYA, in classes 18 and 34 in Australia, EU, China, Lebanon & Indonesia. In India, the third party’s mark 
in Class 34, claiming users since June 05, 2006, is pending registration.
Petitioner’s Submissions
The petitioner claimed that the impugned mark was not Respondent No. 1’s original work but that of a third party. Respondent No. 1 was infringing and had blatantly copied the third party’s prior adopted, used, and registered mark artwork.
The petitioner argued that in the Examination Reports of the trademark applications of Respondent No. 1, the third party’s mark MYA had been cited. Respondent No. 1 had taken a stand that its marks were not deceptively similar and were not being worked in India. The petitioner claimed that neither Respondent No. 1, in its defence, had mentioned that it was the originator, owner, creator or proprietor of the impugned artwork, nor had it served any notice under Rule 16(3) of the Copyright Rules, 1958, on the third party who had a valid interest in the work. The petitioner stated that in view of the Berne Convention, copyright registration is protected worldwide through its member countries and is valid throughout all territories. Further, the petitioner pointed out the difference between trademark and copyright and stated that a trademark protects the user and not the creator and is territorial in nature, whereas copyright registration transcends boundaries.
However, on January 21, 2021, Respondent No. 1 filed a criminal complaint under Sections 63 and 68A of the Act read with Section 420 of the Indian Penal Code, 1860 (“IPC”) against the petitioner based on the impugned registered copyright. The petitioner argued that it was the “aggrieved person” and that the impugned mark should be rectified/cancelled based upon numerous judgments and Section 50(b) of the Act. The petitioner also contended that in view of Sections 13(1)(a) and 17(a) of the Act, as well as the third-party registrations that were mentioned in the oppositions filed by the third party against Respondent No. 1’s trademark applications, there existed no originality in the impugned mark and that Respondent no.1 cannot claim originality in the said work.
Submissions of the Respondent
The respondent submitted that the present petition was not maintainable as the petitioner did not have a locus and was not an aggrieved person. The respondent further contended that pursuant to its copyright application, and in view of Section 45 provisio of the Act read with Rule 24(3) of the Trade Mark Rules, 2002, the Registrar conducted a search for any identical/similar marks subsisting on the register of trade mark and upon no result being obtained, the Registry issued a search certificate thereby resulting in the subsequent registration of artistic work in the name of Respondent No. 1.
Respondent No. 1 further contended that the petitioner, in its opposition against the Third-party’s registration applications, had taken a stand that the mark adopted by the petitioner is an inherently and highly distinctive trademark that has been openly, extensively and continuously used and that the petitioner was also originator, owner, inventor, proprietor and creator of artistic work of copyright titled: ‘THE MYA’ under Copyright Act. Considering that the petitioner itself was claiming ownership, Respondent No. 1 contended that the petitioner was estopped from claiming that the Third Party is the author of the artistic work and that such contrasting and conflicting statements would not entitle the petitioner to relief.
Respondent No. 1 further contended that the petitioner, in its reply to the Examination Report dated September 22, 2020, had stated that the petitioner’s mark was different from Respondent No. 1’s mark, thereby implying that Respondent No. 1, who had been using the word and device mark MYA and other formative marks since 2010, was the original adopter of the artistic work. Respondent No. 1 contended that the petitioner adopted MYA in 2019 and admitted that Respondent No. 1 was the earlier adopter. Respondent No. 1 further submitted that the Registry cited no identical or deceptively similar marks in its Search Report and certificate.
Respondent No. 1 also contended that the Third Party was not a party to the present proceeding and that the petitioner was merely agitating the present issue on behalf of the Third Party. In view of the above, the petitioner was estopped from objecting to the impugned mark as the petitioner itself had adopted a mark MYA in a similar manner as well as opposed to several applications of the third party. Respondent No. 1 contended that the petitioner cannot approbate and reprobate, considering they had claimed ownership of the said artistic work and now state that the artistic work is of the third party.
Submissions of the Rejoinder
The petitioner contended that the adoption in 2010 by Respondent No.1 was dishonest as the Third Party had a 2006 prior registration and that Respondent No. 1 had given a contrary reply that it was using its mark since 2019 and the same was not being marketed in India. The petitioner differentiated between the objection and intention of the Copyright Act and the Trademarks Act and that it was in the interest of the public to have a wrongful entry removed, and that if the mark continued to remain on the register, it would curtail or limit the legal right of the aggrieved person.
The petitioner also relied upon Mohd. Naseer v. Iqbal Hussain, 2008 SCC OnLine CB 24, wherein it was held that since the petitioner and respondent were in the same trade and the respondent had launched criminal proceedings against the petitioner alleging violation of his mark, the same was enough for the petitioner to assail the existence of the registration of their artistic work.
Court Analysis and Order
The Court opined that it was ex-facie clear and incontrovertible that an application under Section 50 of the Act can only be filed by a person aggrieved and that rectification can only follow in three situations, namely (a) entry wrongly omitted; (b) entry wrongly made or remaining on the register; and (c) correction of an error or defect in the register. The present case of the petitioner fell under Section 50(b) entry wrongly made or remaining on the register.
In view of the above, the Court opined that in the present case, the petitioner had to prove two things, namely that he is a ‘person aggrieved’ and that the entry in the copyright register was ‘wrongly made’. The Act, however, did not define a person aggrieved, and the Court observed that as per the Trade Marks Act, a person aggrieved was one against whom infringement action is taken or threatened. It also held that locus standi had to be ascertained liberally.
The Court further held that the petitioner was an aggrieved person on account of the infringement action taken by Respondent no.1. With regard to wrongly made, the Court opined that the petitioner’s reliance on the third-party trademark registrations was unsustainable as the third party was not a party to the present proceeding nor was any attempt made by the petitioner to make the third party a party to the present proceeding. The Court held that:
“In the absence of the third party, on whose registrations petitioner seeks to rely upon for asserting that the copyright in favour of respondent no.1 does not exist, there can be no incontrovertible evidence which petitioner can rely upon to prove that the artistic work in which the copyright is registered, was originally authored by the third party or was otherwise rightfully claimed by the third party. Merely relying upon trademark registrations in favour of the third party received in Australia and other countries cannot be undisputed evidence of the fact that the original author or legitimate owner of the copyright in the said artistic work is the third party and no one else. Accepting petitioner’s submissions in this regard would rectify the copyright register based on extraneous and unverified evidence.”
The Court further opined that reliance on the Berne Convention was not in favour of the petitioner as the Berne Convention simply attempts to bind all contracting parties to allow seamless copyright protection and to guarantee rights in protected works. The Berne Convention provides the author of a work to protect its rights irrespective of territorial boundaries. The Court held that in the present case, if, as per the petitioner, the original author in the said artistic work was the Third Party. It would be up to the Third Party to assert its rights, and the same would be assessed based on the evidence produced by the Third Party.
The Court was also of the view that the petitioner was standing in multiple boats as the petitioner had filed oppositions to both the Third Party and Respondent No.1’s Indian trademark applications, and in turn, the Third Party has filed oppositions or rectifications against the Petitioner and Respondent No. 1’s applications. The Court was of the view that the inter se slugfest between Petitioner, Respondent no.1 and Third Party with respect to the mark ‘MYA’ through oppositions and rectifications could not serve to distil out an inviolable conclusion that the original authorship in the artistic work was that of the Third Party. Therefore, the impugned registrations ought to be rectified and expunged from the copyright register.
The Court further agreed with Respondent No.1’s contentions regarding the approbation and reprobation by the petitioner in light of their trademark registrations with a similar artistic work. The Court further held that Section 48 of the Act did not prevent any other party from asserting that they are the original authors of the artistic work and that the register of copyrights is only prima facie evidence of particulars entered therein. Therefore, It would be for the third party or any other party claiming authorship to assert their rights and not for the petitioner to take the crutches of a third party’s position, that too presumed and in their absence. Accordingly, the petition was dismissed.
Authors: Manisha Singh and Angelina Talukdar
First Published by: Mondaq here