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From the beginning of time, man has always evolved with the help of his intellect. This intellect has helped in creating ideas and some of the world’s most prized possessions. But without any regulatory framework, this expression of ideas was threatened by infringement, non-development and lack of financial incentive that led to disheartened artists.
It was the Berne Convention that created the first ever policy for the protection of these works. It came up with great policies that mandated the automatic creation of copyright protection with the first record of usage along with a bundle of rights, one of them being the right to restrict anyone from using it. In India, with the Copyright Act, 1957 (Hereinafter, The Act),the country embodied the principles of these international laws and implemented Section 45 that made the registration of these copyrights’ voluntary.
The question however that has been debated in the court of law is whether it is mandatory for the copyrights to be registered to claim relief against an infringer.
The Bombay high court in Sanjay Soya Private Limited v Narayani Trading Company interpreted the law and answered this question in detail.
The Plaintiff, Sanjay Soya Pvt Ltd. dealt in the sale of refined soyabean oil. They used a distinct and unique packaging with a yellow backdrop, an oil drop, a happy family, an oval green shape with their tagline and a red band with their brand name ‘Soya Drop’. The Respondent, Narayani Trading Co. on the other hand also had a deceptively similar packaging with a yellow backdrop, an oil drop, a happy family, a green shape with their tagline and a red band with their brand name ‘Soya Amrut’. The dispute emerged when the plaintiff got to know of the deception and filed a suit in the court of law alleging trademark, copyright infringement, and passing off for using a similar mark.
The issues that the court decided on were:
- Whether Sanjay soya had the exclusive rights on the copyright?
- Whether an unregistered copyright provides protection against infringement?
- Whether a label contains Trademark as well as a copyright?
The rules that the court of law relied on were firstly, Section 2(c) of The Act which defines the ambit of artistic works that includes paintings, drawings, or any work of craftmanship. Secondly, Section 45 of the act that prescribes the voluntary nature of copyright registration. Thirdly, Section 17(c) grants the employer ownership over any works of art created by an employee in the course of his employment.
The judgment also took notice of the precedent of Dhiraj Dewani v. Sonal Infosystem that mandated the mandatory registration of a copyright to claim relief against any infringer.
The arguments from the plaintiff sides were that the plaintiff’s design was created by an employee of the maiden company, S.K. Oil and was the original artwork as per the meaning of section 2(c) of The Act. S.K. Oil transferred all intellectual property rights to the plaintiff in 2004. In, 2007 the plaintiff got their trademark registration for ‘Soya Drop’ and started gaining goodwill and growth with the name.
The respondent however, contested on grounds that firstly, a company cannot own a copyright under section 17. Secondly, that a copyright and a trademark cannot coexist. Thirdly, that the mark has a prior use and lastly, argued vehemently over the decision by the court in Dhiraj Dewani v. Sonal Infosystem.
These arguments by the Bombay High Court were discarded by specifying that as the label was designed by an employee of S.K Oil, Section 2(c) and Section 17(c) of the Act grants them exclusive rights over it. The court also disregarded the second argument and the respondent failed to provide any proof of prior use for the third argument.
The court however discussed in detail the case of Dhiraj. In this case, the subject matter of the dispute was the copyright infringement of a taxation software. The plaintiff had claimed civil and criminal reliefs which required the courts to interpret the law strictly as the respondent’s conviction under the provisions 63, 63b and 64 could only be done if the respondent does the infringement knowingly. Thus, implying that that the respondent should have known about the copyright registration the court interpreted section 45 of the copyright act to be mandatory rather than voluntary. It held that a relief for any unregistered copyrights cannot be granted.
But the Bombay High Court states that this judgement is per incuriam. It failed to consider former contrary judgements such as Burroughs Wellcome (India) Ltd v Uni-Sole Pvt Ltd and Another and Asian Paints (I) Ltd v M/s Jaikishan Paints & Allied Products, and failed to interpret the law correctly.
The Court thus overruled this judgement and pronounced that according to the law and interpretation of it, the registration of a trademark is mandatory as it grants exclusive and special rights but that is not the case with copyright laws. Copyright protection is granted to the person when the creation is created and anything contrary would restrict the exclusive rights of many people. It’s about the hard work, sweat and labour that has gone into developing the original work, and no forger would ever be able to create that original work or be in the state to do so. It stated that neither the Berne Convention, 1886 or the TRIPs, 1994 mandates the mandatory registration.
In conclusion, the Bombay High Court in Sanjay Soya Private Limited v Narayani Trading Company held that Sanjay Soya be granted the IP through its maiden company and have exclusive rights on it. It overruled the case of Dhiraj and held that an unregistered copyright enjoys the same rights for claiming relief as a registered copyright and that a label can contain a copyright and a trademark at the same time.
Author: Ishita Goel – a student of Symbiosis Law School (Noida), currently an intern at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email firstname.lastname@example.org