Bombay High Court: Copyright registration of a label not mandatory
- SSPL claimed that NTC was using similar trade dress and labelling for soya bean oil products
- NTC claimed that SSPL did not own the copyright for the label artwork
- The court dismissed NTC’s argument that copyright registration is mandatory to maintain an action under the Copyright Act
The parties in Sanjay Soya Private Limited v Narayani Trading Company dealt in refined edible oil products and the dispute arose concerning the use of packaging. The Plaintiff, Sanjay Soya Private Limited (SSPL), filed the suit before the Mumbai High Court alleging trademark and copyright infringement and passing off against the Defendant, Narayani Trading Company (NTC) for using similar trade dress and labelling for soya bean edible oil products. The parties labels are shown below:
SSPL contentions were as follows:
- It was incorporated in the year 2004 and is the successor-in-title of S.K. Oil Industries (S.K. Oil).
- It has been manufacturing and selling edible oils, including soya bean oil for several years.
- An employee of S.K Oil designed the label in question and is an original artistic work within the meaning of section 2(c) of the Copyright Act, 1957. In 2004, S.K. Oil assigned the copyright to SSPL.
- The label mark SOYA DROP was registered in May 2007, has been used continuously and has acquired goodwill and reputation.
- In October, 2020, SSPL became aware of NTC’s use of a similar trade dress and label for soya bean edible oil products. The confusion was imminent as the marks are visually and conceptually identical and used in relation to identical goods. SSPL considered this adoption to be dishonest as it can lead to NTC benefitting from the goodwill and reputation of SSPL’s business.
NTC’s response was as follows:
- SSPL and S.K. Oil can claim no copyright in the artistic work and the assignment is also not valid.
- The SSPL label mark is a registered trade mark and therefore cannot be an artistic work. A person may have a registered trademark or copyright, but not both.
- As per the Bombay High Court judgment, Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. and Others,( MANU/MH/0255/2012) copyright registration is mandatory to maintain an action, civil or criminal under the Copyright Act.
The Court, after considering the pleadings, arguments, and case laws, held as follows:
- NTC’s challenge regarding assignment from S.K. Oil to SSPL ought to fail as they are not a party to the agreement and have no locus standi to question the document.
- NTC does not claim copyright in the SOYA DROP label or artwork.
- The argument that trade mark registration and copyright protection are distinct and lack connection and a person may not have both is wholly incorrect. The label has registration under the Trade Marks Act, and the original artistic work in the label receives copyright protection. NTC had failed to prove that they are prior user of the artwork/label or SSPL artwork is not original.
- The judgment relied on by NTC to contend that registration is mandatory to maintain an action under the Copyright Act is not sustainable as it was passed without due regard to facts and the relevant law. The Court noted that several Courts, including the Supreme court, have held that copyright registration is not mandatory.
- There is a clear difference in rights granted to a registered proprietor under the Trade Marks Act and those provided under the Copyright Act.
- As per the Trademarks Act, the right to sue for infringement is only available to a registered proprietor, whereas, there is no such requirement under the Copyright Act.
- Copyright provides a range of rights and privileges to the first copyright holder without requiring prior registration.
- Section 27 of the Trade Marks Act provides that no person is entitled to institute any proceeding regarding infringement of an unregistered trade mark that is conspicuously absent in the Copyright Act.
- The underlying principle under copyright law is that no author can claim rights in the original work of another. In contrast, there is a possibility of concurrent users or two or more registered proprietors of similar marks under trade mark law.
- NTC cannot claim to be the first author of the artistic work, nor can it point to anyone else prior to SSPL or S.K. Oil who may have used the label.
The Court concluded that an attempt to draw a distinction between the two labels would not succeed. The images made it clear that NTC has adopted a deceptively similar label and substantially copied the artistic work comprised in SSPL’s trade dress and packaging.
In view of the above, the Court confirmed the injunction in favour of SSPL pending disposal of the suit.