Full Judgment Text
$~3 & 4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of Decision: 12 November, 2024
+ C.O.(COMM.IPD-CR) 9/2024
OPELLA HEALTHCARE GROUP .....Petitioner
Through: Mr. C.A. Brijesh and Ms. Pragati
Agrawal, Advs.
M: 9599041991
Email: pragati.agrawal@remfry.com
Mr. Peeyoosh Kalra, Ms. V. Mohini
and Mr. Udayvir Rana, Advs.
M: 9910657461
Email: udayvir.rana@remfry.com
versus
VAIBHAV VOHRA & ANR. .....Respondents
Through: Mr. Mohit and Mr. Jai Prakash, Advs.
4
+ C.O. (COMM.IPD-TM) 92/2024
OPELLA HEALTHCARE GROUP .....Petitioner
Through: Mr. Peeyoosh Kalra, Ms. V. Mohini
and Mr. Udayvir Rana, Advs.
M: 9910657461
Email: udayvir.rana@remfry.com
versus
VAIBHAV VOHRA & ANR. .....Respondents
Through: Mr. Mohit and Mr. Jai Prakash, Advs.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present petitions are filed seeking the following:
1.1 C.O. (COMM.IPD-TM) 92/2024 is filed under Sections 47 (1)(A) and
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 1 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
57 of the Trade Marks Act, 1999 (“ Trade Marks Act ”) for rectification of
the Trade Marks Register by removal of the impugned mark, i.e.
PHENSERYL/
registered in favour of
respondent no. 1, bearing registration no. 3791026 in Class 5, on account of
being phonetically, visually and deceptively similar to the petitioner‟s mark.
1.2 C.O.(COMM.IPD-CR) 9/2024 is filed under Section 50 of the
Copyrights Act, 1957 (“ Copyrights Act ”) read with Rule 71 (1) of the
Copyright Rules, 2013 (“ Copyright Rules ”) for rectification of the Register
of Copyright by removal of the impugned copyright, i.e.
with respect to the alleged artistic work,
registered in favour of respondent no. 1, bearing Copyright registration no.
A-130319/2019.
2. It is to be noted that the petitioner herein is also contesting a suit, i.e.
CS (COMM) 552/2024 , against respondent no. 1 herein. In the said suit, vide
th
order dated 09 July, 2024, this Court has passed an order of interim
injunction in favour of the petitioner/plaintiff, restraining the respondent no.
1/defendant from using the impugned mark, either as a trade name/corporate
name/domain name, or in any manner, whatsoever.
3. Respondent no. 2 in both petitions, are a formal party, i.e. Registrar of
Trade Marks and Registrar of Copyrights.
4. Facts, as canvassed in the petitions, are as, follows:
4.1. The petitioner is engaged in the business of development and
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
distribution of therapeutic solutions, in this case, under the mark
„PHENSEDYL‟ which was adopted in the year 1954 for their
pharmaceutical product created for treating allergic symptoms, like runny
nose, watery eyes, sneezing and throat irritation.
4.2 The petitioner started distribution under the said mark internationally
in the 1950s and in India in the year 1995 after the registration of its mark
st
„PHENSEDYL‟ under registration no. 165059 in Class 5 on 21 July, 1954.
Consecutively, the petitioner registered the mark,
under
nd
registration no. 789677 in Class 5 on 02 February, 1998. Therafter, the
petitioner secured registration of the mark (label),
th
under registration no. 795369 under Class 5 on 17 March, 1998.
4.3 The petitioner‟s products bearing the petitioner‟s trade
dress/packaging/get-up/layout/artwork in respect thereof
are being marketed and sold in India by Rhone
Poulenc India Ltd., the sub-licensor of the petitioner since 1995 and Abbott
Healthcare Pvt. Ltd. since 2010 through sub-licensor, Piramal Pharma Ltd.
4.4 The respondent no. 1 is enagaged in similar and cognate business as
that of the petitioner, i.e. pharmaceutical products, under the impugned mark
PHENSERYL/
and the copyright therein, which
are both registered in favour of respondent no. 1.
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 3 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
4.5 Thus, the present petitions came to be filed seeking rectification of the
impugned trade mark bearing registration no. 3791026 and copyright
bearing registration no. A-130319/2019, registered in favour of respondent
no. 1, from the Register of Trade Marks and Register of Copyrights.
5. On behalf of the petitioner, the following submissions have been
made:
5.1 The impugned mark is liable to be expunged from the Register as no
bona fide use has been made by respondent no. 1, and any manner of usage
is with a mala fide intention of associating its products with the petitioner.
5.2 The impugned mark registration is deceptively similar to the
petitioner‟s much prior and well known trade marks PHENSEDYL/
PHENSEDYL,
and
and for similar goods.
Therefore, the impugned mark would cause confusion and/or deception in
the course of trade and will be mistaken for the petitioner‟s marks.
5.3 The petitioner‟s mark is a well known mark within the provisions of
Article 6 bis of the Paris Convention and therefore, by virtue of long and
extensive use along with publicity over the world, the petitioner‟s marks
have carved a niche for itself. Therefore, the registration of the impugned
mark is taking an unfair advantage and is detrimental to the distinctive
character and repute of the petitioner‟s marks.
5.4 The petitioner‟s registered mark, „PHENSEDYL‟ has a prior use since
1954, i.e. 70 years, and has used the mark for its products in India since
1995. Further, the mark is used on an international level across various
countries for the products of the petitioner. Whereas, the impugned mark,
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
st
i.e. „PHENSERYL‟ has claimed user only since 01 December, 2016.
5.5 The petitioner has adopted and are using a unique, artistic and
distinctive packaging comprising a unique colour combination blue and
pink/red colour, comprising unique artwork with respect to the products
under the petitioner‟s trade marks, „PHENSEDYL‟ viz.
and
.
5.6 The packaging of the petitioner on the their products bearing the
mark, „PHENSEDYL‟ constitutes original „artistic work‟ and has garnered a
well known reputation, indicative of which are the sale figures of the
petitioner over the years.
5.7 The mala fide of respondent no. 1 is evident from the fact that they
are aware of the goodwill and reputation vesting in the artwork,
, and therefore, have commenced use of similar
pacakaging/artwork and obtained registration of the same.
5.8 The impugned work of respondent no. 1 is an exact and verbatim
copy along with substantial reproduction of the artwork in the petitioner‟s
trademarks, therefore, any viewer would clearly get an unmistakable
impression that the impugned work is a copy or imitation of the petitioner‟s
work.
5.9 The respondent no. 1 has deliberately omitted to comply with the
requirements of serving notice of application to the petitioner as required
under Rule 70 (9) of the Copyright Rules, despite admittedly being aware of
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C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 5 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
the petitioner‟s rights in their artwork.
5.10 The Registrar of Copyrights could not have issued the „Clearance
Certificate‟ on account of the registered trademarks of the petitioner,
therefore, the grant of registration and Clearance Certificate is erroneous and
liable to be cancelled.
5.11 The respondent no. 1 sought registration of the copyright work only to
create prima facie evidence in its favour to lend weight to its alleged claim
of being vested with the proprietary rights in the petitioner‟s mark/artwork.
Therefore, where the dominant objective for registration of copyright was
only to acquire legitimacy and not to copyright artistic work, the registration
is liable to be removed.
5.12 The products of the both the parties are essentially a „cough syrup‟
and „cough medicine‟ which is a product „sold Over the Counter‟. Therefore,
the same is likely to cause confusion for the general public. Furthermore,
infringement or confusion in relation to pharmaceutical products, have to
undergo high scrutiny.
5.13 The respondent no. 1 is a habitual offender and has been restrained
from using several marks by this Court. To substantiate the same, the
following judgements/orders are relied upon:
i. Dr. Reddy’s Laboratories Limited Versus Pureca Laboratories Pvt. Ltd.,
CS (COMM) 221/2020 .
ii. The Himalaya Drug Company & Ors. Versus Pureca Laboratories Pvt.
Ltd., CS (COMM) 170/2020 .
iii. M/s Antex Pharma Pvt. Ltd. Versus Pureca Laboratories (P) Ltd., CS
(COMM) 1315/2016 .
6. On behalf of respondent no. 1, the following submissions have been
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 6 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
made:
6.1 There is no deceptive similarity between the marks of the petitioner
and respondent no. 1. Further, the registered trademark of respondent no. 1,
i.e. „PHENSERYL‟ and colour, combination, character, packaging, logo are
completely different from that of the Copyright and Trade Mark of the
petitioner. Therefore, there is no likelihood of confusion being caused
between the products.
6.2 The respondent no. 1‟s mark/artistic work are registered by complying
all due process and law with a valid, bona fide and legal use. Further, when
the mark was applied for, there was no objection from the Trade Marks
Registry with regard to the plaintiff‟s product.
6.3 The name and address of respondent no. 1 appears on its packaging
which is itself sufficient to distinguish the goods of respondent no. 1 from
that of the petitioner‟s goods.
6.4 The artistic work in respondent no. 1‟s mark is a registered copyright
and is different from that of the artistic work in the petitioner‟s mark.
Further, the products sold by respondent no. 1 is under prescription and
recommended by doctors, therefore, public or comman man will not be
confused by the name.
7. I have heard learned counsels for the parties and have perused the
record.
8. At the outset, this Court notes that the petitioner has various
trademark registrations under Class 05 in relation to its mark,
„PHENSEDYL‟, which are valid and subsisting. Further, the usage of the
st
said marks dates back as far as 21 July, 1954. The registrations in favour of
the petitioner, are reproduced as under:
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 7 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
9. The petitioner has also substantially demonstrated their usage of the
marks, as can be made out through their sales under the said mark. Table
showing the sales figures from the year 2014 to 2023 is reproduced as under:
10. It is to be noted that the petitioner has been operating, marketing and
selling its products in India through its sub-licencees, Rhone Poulenc India
Ltd., since 1995, and Abbott Healthcare Pvt. Ltd. since 2010, through sub-
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
licensor, Piramal Pharma Ltd. Thus, on account of the same, it becomes
manifest that in India, the petitioner has been extensively, continuously and
regularly using its trademarks, PHENSEDYL/ PHENSEDYL,
and
.
11. On the other hand, the respondent no. 1 has claimed user in his
st
impugned mark, i.e. „PHENSERYL‟ since 01 December, 2016.
Furthermore, there is no supporting evidence brought on record to show any
sales or user of the said mark by respondent no. 1. The contention as put
forth by the said respondent is solely on the lines of its registrations being
granted by the Trade Marks and Copyrights Registry, and a blanket denial of
deception or resemblance with the petitioner‟s marks or artistic work,
therein.
12. Hence, it is indisputably established that the marks of the petitioner
have a prior user, with the petitioner having its user in India, since 1995.
st
While, the user of the respondent no. 1 is claimed to be only since 01
December, 2016.
13. It would be pertinent to compare the two marks, along with the
artisitic works therein. A compartive table is reproduced, as under:
DESCRIPTION
PETITIONER
RESPONDENT NO. 1
PHENSEDYL
PHENSERYL
Trade Mark
(Word &
Label/Device)
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
Copyright
Product
14. Comparions of the two marks, makes it evident that the respondent
no. 1‟s mark „PHENSERYL‟ is visually and phonetically similar to the
petitioner‟s mark, „PHENSEDYL‟. Further, the colour dark blue in the trade
dress/packaging and the white font to depict the name, are the prominent and
dominant part of both the marks and/or the artistic work, therein.
15. The artistic work in the packaging/label, as shown above, indicates
that the respondent no. 1 has attempted to bring his packaging as close as
possible, to that of the petitioner‟s packaging. The usage of the dark blue
colour, white font, blue and pink/red combination as is being used by the
petitioner in their packaging, is being used by respondent no. 1 in a similar
manner.
16. Further, it is to be noted that the products, i.e. cough syrups, are also
similar in their manner of design, especially, to the aspect of usage of the
dark blue colour, white font and the blue-pink/red combination, which is the
theme as followed by the petitioner in their products and in a similar manner
by respondent no. 1, in their products.
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 10 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
17. Therefore, it is manifest that the marks of the respondent no. 1 are
likely to cause confusion and give the general impression that the same may
be associated with the petitioner. The consumers and members of the trade,
are likely to be confused, or deceived into believing, that the respondent no.
1 is associated with the petitioner, or is selling the goods originating from
the petitioner.
18. Holding that Courts have to maintain the purity of the Register and
the Register should not contain marks, which are likely to confuse or deceive
an unwary purchaser, the Division Bench of Bombay High Court in the case
of Ciba Ltd. Basle Switzerland Versus M. Ramalingam and S.
Subramaniam trading in the name of South Indian Manufacturing Co.,
Madura and another, 1957 SCC OnLine Bom 45 , has held as follows:
“xxx xxx xxx
5. Now, in considering both S. 46 and S. 10 it has got to be
remembered that the primary duty of the Court is towards the public
and the maintenance of the purity of the register. When a case is
sought to be made out that a particular trade mark is likely to
deceive or cause confusion, the contest is not so much between the
parties to the litigation as it is a contest between the party defending
his right to a particular trade mark and the public, and the duty of
the Court must always be to protect the public irrespective of what
hardship or inconvenience it may cause to a particular party whose
trade mark is likely to deceive or cause confusion. The object of
maintaining a trade mark register is that the public should know
whose goods they are buying and with whom particular goods are
associated. It is therefore essential that the register should not
contain trade marks which are identical or which so closely
resemble each other that an unwary purchaser may be likely to be
deceived by thinking that he is buying the goods of a particular
person or a particular firm or a particular industry, whereas he is
buying the goods of another person or firm or industry.
xxx xxx xxx”
(Emphasis Supplied)
19. Likewise, holding that deceptive similarity or confusion is the
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
principle criterion for determining applications both for registration as also
for rectification, and that purity of register is to be maintained, Supreme
Court in the case of Khoday Distilleries Limited Versus Scotch Whisky
Association and Others, 2008 SCC OnLine SC 975 , has held as follows:-
“xxx xxx xxx
29. Indisputably, the purity of the register is to be maintained.
Indisputably again, the public interest has to be kept in view. An
application for registration has also to be considered keeping the public
interest in view. What is therefore necessary for the Registrar is to arrive
at a conclusion as regards registration of mark, is as to whether having
regard to the nature of the mark sought to be registered and the use
thereof as also the class of buyers (sic they) would be deceived or
confused with the mark registered or not.
30. An application for rectification and correction of the register may
be entertained if any of the grounds specified therein exist viz.
contravention or failure to observe the condition entered on the register or
in relation thereto. An application for rectification and correction of the
register would also be maintainable if a person is aggrieved by the
absence or omission from the register of any entry or by any entry made in
the register without sufficient cause or by any entry wrongly remaining on
the register or by any error or defect in any entry in the register.
31. The power of the Registrar in terms of Section 56 of the Act is
wide. Sub-section (2) of Section 56 of the Act used the word “may” at two
places. It enables a person aggrieved to file an application. It enables the
Tribunal to make such order as it may think fit. It may not, therefore, be
correct to contend that the delay or acquiescence or waiver or any other
principle analogous thereto would apply under no circumstances. Purity
of register as also the public interest would indisputably be relevant
considerations. But, when a discretionary jurisdiction has been conferred
on a statutory authority, the same although would be required to be
considered on objective criteria but as a legal principle it cannot be said
that the delay leading to acquiescence or waiver or abandonment will
have no role to play. (See Ciba Ltd. v. M. Ramalingam [AIR 1958 Bom
56]). In determining the said question, therefore, conduct of the person
aggrieved in filing the application for rectification would be relevant. For
the aforementioned purpose, whether it is a class or group action or a
private action although would be relevant but may not be decisive. It is
one thing to say that class or group action will receive special attention of
the statutory authority vis-à-vis a private action. But, in both types of
cases, public interest should remain uppermost in the mind of the
authority. The question which is required to be posed therefore would be
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
as to whether the public in general or the class of buyers would be
deceived or be confused if the existing mark is allowed to remain on the
register. Thus, deceptive similarity or confusion is the principal criterion
for determining applications both for registration as also for
rectification.
xxx xxx xxx”
(Emphasis Supplied)
20. It is also apposite to consider that the products sold by the parties are
clearly those which are sold as Over the Counter products. Therefore, the
argument by learned counsel for respondent no. 1, that the products are sold
through doctor‟s prescription, is unacceptable. Furthermore, the same being
pharmaceutical products, require a higher degree of scrutiny and care. Thus,
Supreme Court in the case of Milmet Oftho Industries and Another v.
Allergan Inc., (2004) 12 SCC 624 , while holding that judicial scrutiny is
required in case of medicinal products, even if the same are prescription
drugs, but which look alike or sound alike, has held as follows:
“xxx xxx xxx
7. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals
Ltd. [(2001) 5 SCC 73: 2001 PTC 300] the question was whether the
marks “Falicigo” and “Falcitab” were deceptively similar. The trial
court refused interim injunction. The appeal was also dismissed. This
Court did not interfere on the ground that the matter required
evidence on merits but laid down principles on which such cases were
required to be decided. This Court held that in a passing-off action for
deciding the question of deceptive similarity the following facts had to
be taken into consideration: (SCC p. 95, para 35)
“35. (a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks i.e. both words
and label works.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as
trade marks.
(d) The similarity in the nature, character and performance of
the goods of the rival traders.
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
(e) The class of purchasers who are likely to buy the goods
bearing the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the
goods.
(g) Any other surrounding circumstances which may be relevant
in the extent of dissimilarity between the competing marks.”
In respect of medicinal products it was held that exacting judicial
scrutiny is required if there was a possibility of confusion over
marks on medicinal products because the potential harm may be far
more dire than that in confusion over ordinary consumer products.
It was held that even though certain products may not be sold across
the counter, nevertheless, it was not uncommon that because of lack
of competence or otherwise mistakes arise specially where the trade
marks are deceptively similar. It was held that confusion and
mistakes could arise even for prescription drugs where similar goods
are marketed under marks which looked alike and sound alike. It
was held that physicians are not immune from confusion or mistake.
It was held that it was common knowledge that many prescriptions
are telephoned to the pharmacists and others are handwritten, and
frequently the handwriting is not legible. It was held that these facts
enhance the chances of confusion or mistake by the pharmacists in
filling the prescription if the marks appear too much alike.
xxx xxx xxx”
(Emphasis Supplied)
21. This Court in the case of Hugo Boss Trademark Management GmbH
and Company Versus Sandeep Arora Trading as Arras the Boss and
Others, 2023 SCC OnLine Del 7956 , while dealing with a case, wherein,
the copyright registration in favour of the respondent therein, was found to
be infringing the trademarks registration of the petitioner therein, held that
though trademarks and copyrights operate under different statutes, rights in
an artistic work for copyrights, could overlap with label marks registrable
under the Trade Marks Act. It was held that an identical mark being used as
an artistic work, as copyright, would result in infringement of an existing
trademark. Thus, it was held as follows:
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
“xxx xxx xxx
15. This Court notes that Section 45 of the Act clearly specifies that
when any person is seeking copyright registration for artistic works
used or potentially used in connection with goods or services, the
application for copyright registration must include a statement
acknowledging this use. Additionally, the said application must
include a certificate from the Registrar of Trade Marks that no trade
mark identical or deceptively similar to the artistic work has been
registered or applied for by anyone other than the applicant. This
requirement ensures that the artistic work does not infringe upon
existing trade marks. Section 45 of the Act is set out below:
“45. Entries in register of copyrights.— (1) The author or
publisher of, or the owner of or other person interested in the
copyright in, any work may make an application in the
prescribed form accompanied by the prescribed fee to the
Registrar of Copyrights for entering particulars of the work in
the register of copyrights:
Provided that in respect of an artistic work which is used or is
capable of being used in relation to any goods or services, the
application shall include a statement to that effect and shall
be accompanied by a certificate from the Registrar of Trade
Marks referred to in Section 3 of the Trade Marks Act, 1999
(47 of 1999), to the effect that no trade mark identical with or
deceptively similar to such artistic work has been registered
under that Act in the name of, or that no application has
been made under that Act for such registration by, any
person other than the applicant.
(2) On receipt of an application in respect of any work under
sub-section (1), the Registrar of Copyrights may, after holding
such inquiry as he may deem fit, enter the particulars of the
work in the register of copyrights.”
16. Vide judgment dated 20-4-2018, this Court in Marico Ltd. v. Jagit
Kaur [Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488] had
observed that though trade marks and copyrights operate under
different statutes, since rights in an original artistic work could
overlap with label marks registrable under the Trade Marks Act,
1999, the legislature in its wisdom added a proviso to Section 45 in
the Copyright Act. Clearly, this proviso has been inserted into the
Act to prevent unscrupulous persons from copying label marks with
the intention of passing off and taking shelter under a false claim of
ownership of copyright in an artistic work. Unquestionably, this
proviso would be applicable in this case as well.
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
xxx xxx xxx
26. In terms of Section 13(1)(a) of the Act, in order to be able to
obtain copyright protection, an artistic work would be required to
meet the threshold of originality. After perusing the above table, it is
evident that the impugned artistic work is definitely not an original
artistic work and primarily consists of the mark “BOSS”, which does
not belong to Respondent 1. Even the colour scheme of the petitioner
has been substantially imitated by Respondent 1, which would also
supplement the finding that the impugned registration is not an
original work.
27. Recently, vide judgment dated 6-9-2023, this Court in, Manju
Singal v. Deepak Kumar [Manju Singal v. Deepak Kumar, 2023 SCC
OnLine Del 5503], while referring to the commentary, The Modern
Law of Copyright and Designs, 4th Edn. by Laddie, Prescott and
Vitoria, has emphasised that in discussions of “originality” and
“substantial part”, it is crucial to understand that if there is
substantial similarity between two works, the later work cannot be
considered original. The relevant extract from the same is set out
below: (SCC OnLine Del para 22)
“22…. The key question is, therefore: has the second man taken
a substantial part of what the first man has created? The
expression „work‟ refers to a human creation; the artefact is
merely the object in which the creation is embodied, as may be
seen from the fact that the copyright in the work survives
accidental destruction of the artefact. As was well put by
Prichard, J. in a New Zealand case:
It is not enough that there is a causal connection with a
drawing in which the plaintiff owns copyright. There must also
be such similarity between the article made by the defendant
and a drawing in which the plaintiff has copyright that it be
seen that a substantial amount of the skill and effort which was
devoted to can making the drawing was appropriated by the
defendant.
∗ ∗ ∗
4.37. Whether or not a substantial part has been reproduced
must be determined by reference to the copyright work and
not the work that is alleged to infringe. The question in any
particular case is whether the features found to have been
copied from the copyright work formed a substantial part of
that work as an artistic work. That is a question of judgment
or impression. However, in answering it, it is not generally
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
relevant to consider whether the features that are alleged to
have been copied also comprise a substantial part of the
alleged infringing work. As a result, even though the alleged
infringing work may not look particularly similar to the
copyright work, it may amount to an infringement. That said,
in certain cases it may still be important still not to lose sight
of the differences between the copyright work and the alleged
infringement since they may help to decide whether copying
has taken place at all.
28. Registration of copyright can be granted only in respect of
original works. It is inexplicable how the Trade Marks
Registry issued a clear search report in respect of the
impugned work, when clearly in respect of the respondent's
trade mark application, the petitioner's marks were cited as
conflicting. The search report itself is rid with inaccuracies
and contrary to the register of trade marks. If any person or
entity misdescribes the work as an original work, when it is
actually not and it is also a substantial imitation of a
registered trade mark and label, such registration would be a
registration wrongly remaining on the register of copyrights.
In view of this position and the prior and superior rights
enjoyed by the petitioner, the respondent's registration is an
entry, which is wrongly made and is also wrongly remaining in
the register.”
xxx xxx xxx”
(Emphasis Supplied)
22. The aforesaid discussion brings forth that the petitioner is the prior
user of the mark „PHENSEDYL‟ and respondent no. 1‟s usage of the mark
„PHENSERYL‟ shows a clear attempt by respondent no. 1 to bring his
marks and packaging visually and phonetically, as close to that of the
petitioner. Furthermore, marks of both the parties fall under the same class,
i.e. Class 05, for similar goods which are pharmaceutical/medicinal products
that require a high degree of caution. Therefore, the impugned mark and the
copyright would clearly cause confusion and deception, and is therefore,
liable to be removed from the Registers.
23. Accordingly, the following directions are issued:
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 17 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38
23.1 The trademark registration for the mark PHENSERYL/
registered in favour of respondent no. 1, bearing
registration no. 3791026 in Class 5, is hereby cancelled.
23.2 The copyright registration
with respect to
the artistic work, registered in favour of respondent no. 1, bearing Copyright
registration no. A-130319/2019, is hereby cancelled.
23.3 The Registrar of Trademarks and the Registrar of Copyrights, are
directed to remove and expunge the aforesaid entries from the Register of
Trademarks and Copyrights, respectively.
24. The Registry is directed to supply a copy of the present order to the
Office of the Controller General of Patents, Designs and Trade Marks of
India, on E-mail Id: llc-ipo@gov.in , for compliance.
25. The present petitions are, accordingly, disposed of, with the aforesaid
directions.
MINI PUSHKARNA, J
NOVEMBER 12, 2024/kr
Signature Not Verified
C.O.(COMM.IPD-CR) 9/2024 & C.O. (COMM.IPD-TM) 92/2024 Page 18 of 18
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:41:38