Search Certificate Inaccurate Due to Cited Deceptive Trademarks Invalidates Subsequent Copyright Registration and Procedural Compliance.

The Petitioner, owner of the registered trademark "ZOOOK" and its variants since 2013, challenged the copyright registration No. A-153061/2024 granted to Respondent No. 1 for an artwork titled "ZOOOK".

Respondent No. 1 had previously withdrawn a trademark application for the same mark following the Petitioner’s opposition and had subsequent applications pending.

Despite these pending disputes and the Petitioner’s prior registrations, the Registrar of Trade Marks issued a Search Certificate (TM-C) stating no identical/similar marks existed, which facilitated the impugned copyright registration.

Section 45 of the Copyright Act, 1957, which mandates that an application for an artistic work used in trade must be accompanied by a Certificate from the Registrar of Trade Marks confirming no identical or deceptively similar mark exists.

Hugo Boss Trademark Management GMBH v. Sandeep Arora, which established that the purpose of the proviso to Section 45 is to prevent the misuse of copyright to protect infringing trademarks.

Rule 70(9) of the Copyright Rules, 2013 requires an applicant to notify any person who has an interest in the subject matter.

Section 50 of the Act was applied to define a "person aggrieved" as one having a real and tangible interest in the work.

The Court found the registration procedurally unsound because the Search Certificate issued by the Registrar of Trade Marks was factually inaccurate. Although an initial Search Report cited the Petitioner's marks as conflicting, the Registrar later issued a "clear" certificate without explaining this discrepancy.

Respondent No. 1 also misled the Registrar by claiming its prior trademark application was "pending" when it had actually been withdrawn.

Regarding Rule 70(9), the Court rejected the Respondents' narrow interpretation, holding that since the Petitioner was actively opposing Respondent No. 1’s trademarks for the same "ZOOOK" logo, the Petitioner was an interested party entitled to notice. The Court concluded that the "start line" of the registration process—the Search Certificate—was incorrect, vitiating the final registration.

The Court ordered the cancellation of copyright registration No. A-153061/2024 and set aside the Search Certificate dated 26.10.2023. The matter was remanded to the Registrar of Trade Marks and the Registrar of Copyrights for fresh consideration, starting from the Examination-cum-Search Report stage, with directions to grant the Petitioner an opportunity to file objections and be heard.