- (1.)THIS is an application under section 50 of the Copyright Act, 1957 (14 of 1957) for expunging the entries in the Register of Copyrights under Nos. A -70858/2005 and A -73955/2005 registered in favour of respondent No. 1 on the ground that these were entered wrongly in the Register. The petitioner is a company registered under the Companies Act, 1913. It is engaged, as claimed, in the manufacture of cycle parts for the past five decades. The petitioner is the manufacturer of Ball Head Racer, a cycle part. It is holding various trade mark registrations over this product. It is holding copyright registration over this product and another product, namely, Screw Racer. The petitioner claims to have been marketing Ball Head Racer and Screw Racer in packagings having distinctive and unique colours combinations since 1952. The petitioner thus claims to be the owner of copyright in all such packagings as original artistic work. According to the petitioner, respondent No. 1 carries on similar business of manufacturing and trade in Ball Head Racers. Petitioner came to know in January, 2002 that respondent No. 1 is infringing petitioner's trade mark and copyright by using packagings which were colorable imitation of and deceptively similar to petitioner's packagings, Accordingly, petitioner filed a suit, being Civil Suit No. 127 of 2002, before High Court of Delhi. High Court was pleased to issue an interim injunction vide its order dated 12th February, 2002. Petitioner alleges that in spite of the interim injunction, respondent No. 1 continued with the infringements and as such the petitioner had to file series of contempt applications before the learned High Court. In spite of this, respondent No. 1 proceeded with obtaining copyright registrations for the impugned artistic works and obtained the necessary search certificates from the Registrar of Trade Marks under section 45(1) of the Copyright Act, 1957 certifying that no trade mark identical with or deceptively similar to the said artistic work has been registered under the Trade and Merchandise Marks Act, 1958 to any other person other than respondent No. 1. Petitioner accordingly filed a civil writ petition under article 226 in the Hon'ble High Court praying for issuance of a writ of certiorari quashing these search certificates which petition is still pending in the High Court praying that the certificates could not have been issued by the Registrar of Trade Marks as the same are contrary to the record of the Trade Marks Register and the proprietary right granted to the petitioner in the Trade Mark Registration Nos. 556912 and 556915 dated 21.8.1991. The grounds taken under the present petition by the petitioner for cancellation of the registration include that the copyright registrations have been obtained in disregard and violation of the provisions of section 45 of the Copyright Act, 1957 and the artistic work which is the subject matter of the impugned copyright registration is not an original work in terms of section 13(1) of the Copyright Act, 1957.
(2.)RELEVANT submissions made by respondent No. 1 in the written statement filed by him include that there is sea difference between packing of the products of the answering respondent and the petitioner. The answering respondent is the holder of registered trade mark "RAJIS" while the petitioner is the holder of the trade mark "B.M." Thus both are phonetically and visually dissimilar. Similarly, the copyrights of the answering respondent are also dissimilar and quite different from that of the petitioner. There are number of packings being used by the various traders and manufacturers in respect of the cycle parts. M/s. Deson Industries, Ludhiana, a manufacturer, having turnover of more than one crore rupees, had got registered its trade mark 'PANCO' way back in 1980 and for which copyright is similar to that of the petitioner and hence it is quite obvious that it is the petitioner who is guilty of copying the coveted original copyright of earlier user M/s. Deson Industries. There are many other traders who are using similar boxes - copies of some of those were annexed as R -11. Colour schemes are common in the trade of cycle parts and petitioner has no original artistic works on which it may claim exclusivity. No extracts of the Resolution of the Board of the Directors of the petitioner -company have been placed on the record and as such petition is liable to be rejected. Answering respondent generally controverted on merits the submissions made by the petitioner. In his reply to grounds, while generally denying the grounds taken by the petitioner, the answering -respondent denied that the copyright registrations have been obtained by respondent in violation and disregard of the provisions of section 45 of the Copyright Act and they wrongly remain on the register.
(3.)IN the rejoinder filed by the petitioner, it generally refuted the allegations of the answering -respondent and denied the averments made by him. Petitioner submitted that a resolution of the Board of Directors had been passed authorizing Shri Anil K. Mittal, Shri Rajesh K. Mittal and Shri D.P. Mittal to sign and verify the petition and accordingly a copy of the resolution was submitted. Petitioner denied that it has infringed get -up or lay -out of packaging of any manufacturer as alleged by the answering -respondent. It is in market since 1952 - much earlier to Denson cited by answering -respondent. Petitioner reiterated the facts relating to the pending writ petition No. C.W.P. 1604 of 2004 seeking quashing of the search certificates issued by the Registrar of Trade Marks under section 45(1) of the Copyright Act, 1957. Petitioner generally reiterated the grounds taken by it in the petition and rebutted the averments made by the answering -respondent.
In the evidence filed through an affidavit, the answering -respondent produced copies of various registration certificates issued in his favour, in favour of petitioner and in favour of Deson Industries. It also produced an affidavit sworn in by Shri Dalbir Singh, Prop. M/s. Deson Industries mentioning that the petitioner had unauthorizedly adopted the colour scheme on its packing boxes as is his (Denson's) colour scheme. There are more than dozen similar products having same colour scheme in the market. Similarly, the answering -respondent produced another affidavit from Shri Paramjit Singh, Prop. M/s. Mohindra Cycle Industries, Ludhiana wherein he has submitted that the packing box containing the words 'BALL HEAD RACERS' with black base belongs originally to M/s. Deson Industries. Today, every body including he is using red and black colour background due to requirements of trade and not because of any oblique reason. Answering -respondent also submitted a copy of the reply to show cause filed on behalf of Registrar of Trade Marks, being respondent in WP(C) No. 1604 of 2004. The said writ petition filed by the petitioner is still pending in the High Court of Delhi.