The Delhi High Court has held that copyright registration of an art work is irrelevant for the purpose of ascertaining its use as a trademark.
The order was passed by Justice Suresh Kumar Kait on a petition challenging an order passed by the Intellectual Property Appellate Board (IPAB).
The impugned order had upheld the rejection of the petitioner’s application to register its trademark “TRAIN” in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks in 1993. The petitioner had been using the trademark “TRAIN” with the device of train to sell its rice.
The application was rejected due to an objection being filed by the respondent, which claimed to have been engaged in the business of manufacturing and selling its rice under the trademark “TRAIN”. They had in fact registered this trademark since 1983.
The IPAB had primarily relied on the copyright registration of the art work of “TRAIN” to establish its usage by the respondent and had thus held that the petitioner’s registration plea was hit by Section 9, 11 and 18 of the Act of 1999.
The high court, however, opined that this was irrelevant for the purpose of establishing the use of the trademark in question. It observed, “On perusal of the documents on record, I have no hesitation to say that the learned Appellate Board has relied on the Copy Right Registration of respondent under No. A44877/84. The Copy Right Registration of the art work of “TRAIN” brand is extraneous for the purpose of proving the use subject Trade Mark.”
The court further noted that IPAB had not only ignored the fact that the respondent’s registration was only for the word “TRAIN”, but also that the respondent had tried to prove the use at the time of its registration by forged and fabricated documents.
As for the contention that the registration for the mark might cause confusion in the minds of the general public, the court observed, “Learned Appellate Board also failed to appreciate that the petitioner subject matter trademark under registration has been in use for almost 22 years without any interruption and there has been no confusion and deception reported by the respondent. The respondent has positive knowledge of the use of the subject matter trademark by the petitioner since 1990.”
It therefore held that the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of their discretion under Section 12 of the Act.
Furthermore, the court noted discrepancies in the usage of the trademark “TRAIN” by the respondents, noting that, among other things, the device of the TRAIN brand is not the same on all its invoices.
The impugned order was, therefore, set aside and the application for registration of the trademark “TRAIN” for basmati rice was directed to be processed.