Infringer Cannot Escape On Pretext Of Absence Of Copyright Registration: Bombay High Court

Bombay High Court in its decision in case of Sanjay Soya Pvt. Ltd. v. Narayani Trading Company, ruled that copyright registration is not mandatory for claiming relief under the Copyright Act.

It was also held that earlier decision of a co-ordinate bench in the case of Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. & Ors. was per incuriam

In the background, Sanjay Soya Pvt. Ltd. (SSPL), had approached the Court against Narayan Trading Company (NTC) seeking relief for copyright infringement for its artistic work in the label of product. SSPL urged that NTC had illicitly copied their registered label mark.

When it comes to copyright, any brand name or logo label, whether it is registered or not, the law says that it cannot be used by third party for selling identical goods. Thus, SSPL claimed that the two marks were visually and conceptually identical, and deceptively similar. It was also urged that NTC had used the label for trading identical goods and had encashed the goodwill of SSPL.

Accordingly, interim injunction was sought for both trade mark and copyright infringement, so that NTC’s products shall be seized and sealed under the offending or rival label mark.

On the other hand, it was the contention of NTC that SSPL had no copyright in artistic work, as the label mark is a registered trade mark and it cannot come within the scope of artistic work.

As per NTC, trade mark registration and copyright protection are distinct and its upon the choice of the party to have the registered or not. NTC quoted the judgment of the co-ordinate bench in the case of Dhiraj Dewani, wherein it was held that a plaintiff can claim relief, civil or criminal, under the Copyright Act, only if had registered under the Copyright Act.

The present court however is in disagreement with the co-ordinate bench, as there were differences of opinion relating to mandate of copyright registration for filing infringement case.

The Court observed that registration under Trade Marks Act cannot be equated with registration under Copyright Act, as Registration under the Trade Marks Act confers specific distinct rights unavailable to an unregistered proprietor, such as the right to sue for infringement, which is not the essential criterion in case of copyright registration.

The Court observed that copyright is recognition of originality, granting rights of commercialisation and exclusivity to the author of a work, bringing the original expression or realisation of an idea. If the plaintiff has been continuously using the mark since long and generating revenue on basis of same, then misuse of such label by the defendant will definitely amount to infringement.

It is also held by the court that suing in the court with jurisdiction where the plaintiff resides or works, is not dependent on registration of copyright.

The test of deception or its likelihood is that of the common person, and from the images submitted, it would be hard to tell the two label marks apart even for a most diligent individual, said the court.

Case Title: Sanjay Soya Private Limited v. Narayani Trading Company