The Delhi High Court recently delivered a ruling concerning the intersection of trademark and copyright law while adjudicating a petition filed by Fortune Marketing Private Limited seeking cancellation of a copyright registration granted in favour of Gujarat Pesticides for the artistic work “ZOOOK.” The case raised significant questions regarding the extent to which copyright registration can affect pre-existing trademark rights and the circumstances in which a trademark proprietor may seek rectification of the Copyright Register under Section 50 of the Copyright Act, 1957.

Background

Fortune Marketing claimed to be the prior adopter and registered proprietor of the trademark “ZOOOK,” which it has used continuously since 2013 in relation to electronic products falling under Class 09. According to the company, “ZOOOK” is a coined and distinctive mark that has acquired substantial goodwill and recognition through extensive commercial use, advertising, and promotional activities.

The petitioner has invested significantly in promoting the brand through television advertisements, print campaigns, digital media, celebrity endorsements, and sponsorship of major cricketing events. It also operates the domain name “zoook.com,” registered since 2011, and markets its products extensively through online and social media platforms. Owing to these efforts, the petitioner contended that the ZOOOK brand has become associated with its business both in India and internationally.

The dispute originated in January 2020 when Fortune Marketing discovered that Gujarat Pesticides had filed a trademark application for the mark “ZOOOK” in Class 01. The petitioner opposed the application, which was eventually withdrawn after Gujarat Pesticides failed to prosecute the same. Subsequently, Gujarat Pesticides filed fresh applications for both the ZOOOK word mark and a label mark in Class 01. Fortune Marketing opposed these applications, and the proceedings are ongoing before the Trademark Registry.

The dispute escalated in May 2024 when the petitioner discovered that Gujarat Pesticides had secured copyright registration for a packaging label incorporating the mark “ZOOOK.” Fortune Marketing alleged that the impugned artistic work reproduced elements substantially similar to its own label mark and that the registration had been obtained despite the existence of prior trademark rights and pending opposition proceedings.

Petitioner’s Contentions

Fortune Marketing argued that it was a “person aggrieved” within the meaning of Section 50 of the Copyright Act and entitled to seek cancellation of the impugned copyright registration being the prior adopter, user, and registered proprietor of the ZOOOK trademark.

The petitioner contended that the copyright registration was granted on the basis of a Search Certificate issued by the Trademark Registry under Section 45 of the Copyright Act, despite the existence of its earlier trademark registrations. According to the petitioner, the respondent’s artistic work incorporated the identical coined mark “ZOOOK,” which had long been associated with the petitioner’s business.

It was further argued that Gujarat Pesticides had failed to establish any independent originality in the artistic work. The explanation subsequently offered by the respondent that the term “ZOOOK” was inspired by a Nigerian plant known as “ZUK” was an afterthought, considering that no such explanation was given in the trademark opposition proceedings.

The petitioner also alleged a violation of Rule 70(9) of the Copyright Rules, 2013. It submitted that Gujarat Pesticides was fully aware of the ongoing trademark disputes between the parties but failed to notify Fortune Marketing about the copyright application. This omission, according to the petitioner, deprived it of an opportunity to object to the registration before it was granted.

Respondent’s Defence

Gujarat Pesticides challenged the maintainability of the petition and argued that Fortune Marketing lacked the necessary locus standi to invoke Section 50 of the Copyright Act.

The respondent emphasized that copyright and trademark rights arise under different statutes and operate independently. It argued that ownership of a trademark does not automatically entitle a party to challenge a copyright registration merely because the trademark appears within an artistic work. So long as the artistic work satisfies the requirement of originality, copyright protection can subsist independently.

Gujarat Pesticides further contended that Section 50 permits rectification only where an entry has been wrongly made or wrongly remains on the Register and that no such defect had been established by the petitioner.

Relying on the Search Certificate issued by the Trademark Registry, Gujarat Pesticides argued that the copyright registration had been lawfully granted after the competent authority concluded that no identical or deceptively similar trademarks existed. It also submitted that copyright law protects original artistic expression rather than the distinctiveness of a mark and that there was no evidence of copying.

The respondent additionally argued that the parties operated in entirely different fields of business, namely electronics and agricultural products, thereby eliminating any realistic possibility of consumer confusion.

Stand of the Authorities

The Registrar of Trademarks and the Registrar of Copyright arrayed as respondents 2 and 3 respectively defended the registration process and submitted that all statutory requirements had been duly complied with before granting the copyright registration.

The authorities maintained that Rule 70(9) requires notice only to persons claiming an interest in the copyright work itself and not to parties involved in trademark disputes concerning similar marks. Since Fortune Marketing did not claim ownership of the specific artistic work submitted by Gujarat Pesticides, the respondent was not required to notify it of the application.

Court’s Analysis

The High Court examined the petitioner’s extensive use of the ZOOOK mark since 2013 and acknowledged the substantial goodwill generated through long-standing commercial use and promotion.

The Court observed that the requirement of obtaining a certificate from the Trademark Registry before registering an artistic work serves an important purpose. It is intended to ensure that copyright registration does not adversely affect existing trademark rights and to identify potential conflicts before registration is granted.

Reaffirming established legal principles, the Court noted that although copyright and trademark rights originate from separate statutory frameworks, overlap frequently occurs where artistic works incorporate trademarks. In such situations, a trademark proprietor with a legitimate interest may qualify as a “person aggrieved” and seek rectification of the Copyright Register.

The Court found that Fortune Marketing satisfied this requirement. As the prior adopter, user, and registered proprietor of the ZOOOK mark, it possessed a direct and substantial interest in the impugned registration.

A significant aspect of the Court’s reasoning concerned the Search Certificate issued by the Trademark Registry. The Court noted that the Examination-cum-Search Report had specifically identified the petitioner’s ZOOOK trademarks as conflicting marks. Despite this, Gujarat Pesticides failed to adequately address those objections, and a Search Certificate was ultimately issued stating that no similar marks existed.

The Court also held that Gujarat Pesticides had failed to comply with Rule 70(9). Given the ongoing trademark disputes and the respondent’s knowledge of the petitioner’s rights, the failure to notify Fortune Marketing constituted a procedural irregularity that deprived it of an opportunity to participate in the registration process.

Decision

In light of these findings, the High Court revoked the copyright registration granted to Gujarat Pesticides and set aside the Search Certificate that formed the basis of the registration.

The Court directed that the copyright application be reconsidered afresh from the stage of the Examination-cum-Search Report. The authorities were instructed to issue a fresh Search Certificate, invite objections and submissions from both parties, and provide an opportunity of hearing before arriving at a fresh determination. The exercise was directed to be completed within four months.

The judgment is significant for reaffirming that copyright registration procedures cannot be used to sidestep existing trademark rights and that trademark proprietors may, in appropriate cases, challenge copyright registrations that directly affect their legal interests.