In C.O.(COMM.IPD-CR) 1/2021-DEL HC- Obtaining NOC under proviso to Sec.45 of Copyright Act, is compulsory in order to obtain registration of copyright: Delhi HC
Justice Prathiba M. Singh [30-08-2022]

Read Order: ABHISHEK KUMAR v. UNION OF INDIA THROUGH REGISTRAR OF COPYRIGHTS & ORS 

Mansimran Kaur

New Delhi, September 1, 2022: The Delhi High Court has opined that if any person wishes to register artistic work which could also be subject matter of pending or registered trademark, then NOC has to be obtained from Trademark Registry.

A Single Judge bench of Justice Pratibha M. Singh allowed the petition preferred the present cancellation petition under Section 50 Copyright Act, 1957 seeking cancellation of copyright registration granted in favour of his brother- Mr. Ashish Kumar for ‘TURBO PLUS LABEL’ as an artistic work.

The Single Judge bench was of the opinion that the fact that the search certificate was  cancelled and the petitioner’s first application for the trademark was  also revived, the copyright registration in favour of the third respondent  can  thus no longer stand. 

The brief chronology of events leading to filing of the present petition is that the Petitioner adopted the mark ‘TURBO’ in 2010 in respect of coolants falling in class 4.

The petitioner filed a trademark application for the said mark in class 4 for coolants. The same was pending in the Trademarks Registry. The petitioner suddenly acquired knowledge that an affidavit had been filed by some person, which he suspected could be his brother- Mr. Ashish Kumar- the third respondent  in the Trade Mark registry in which the signature of the petitioner was allegedly forged. In the said affidavit, it was represented that the petitioner did not wish to pursue the said trade mark application and wanted to withdraw the same.

The petitioner also filed a fresh application dated February 21, 2019 seeking registration of the device mark ‘TURBO’. The petitioner then learnt that the third respondent had obtained copyright registration dated December 2, 2019 after obtaining an NOC/ Search Certificate dated February, 21, 2019 from the Trade Mark Registry in terms of Section 45 of the Copyright Act. 

Thus, during the pendency of this petition, the NOC which was granted in favour of the respondent already stood cancelled through order dated August 3, 2021. The Counsel appearing for the petitioner submitted that since the NOC was cancelled, the copyright registration also deserves to be rectified under Section 50 of the Act. 

After hearing the submissions, the Court noted that the fact that the search certificate was cancelled and the petitioner’s first application for the trademark was  also revived, the copyright registration in favour of the third respondent  can no longer stands, the Court noted. 

Obtaining an NOC under the provision to Section 45 of the Act is compulsory in order to obtain registration of copyright. Clearly, there seems to be some misconduct indulged into by the third respondent which resulted in this entire sequence of events leading up to the grant of copyright registration in favour of the third respondent. 

 The NOC having been cancelled, the first trademark application of the petitioner having been revived and no reply having been filed by the third respondent to contest the present petition as also the mark of the petitioner and the artistic work of the third respondent being identical, the copyright registration in favour of the third respondent would be an entry which was wrongly made and wrongly remaining on the register in terms of Section 50 of the Act, the Court noted. 

Thus, in view of the above facts and circumstances of the case, the Court noted that the copyright registration in favour of the third respondent no longer deserves to be continued on the Register of Copyrights. The same accordingly was rectified.

Hence, the petition was accordingly allowed.