Copyright registration is not compulsory to sue for infringement: Bombay High Court

23rd Mar,2021

Copyright registration is not compulsory to sue for infringement: Bombay High Court



The Bombay High Court recently ruled that copyright registration is not required to seek reliefs under the Copyright Act, holding that an earlier decision of a co-ordinate bench in the case of Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. & Ors. was per incuriam (Sanjay Soya Pvt. Ltd. v. Narayani Trading Company). Sanjay Soya Pvt. Ltd. (SSPL) had approached the Court with a petition seeking relief for copyright infringement in relation to SSPL's creative work in the mark of its product, and Justice GS Patel had delivered the judgement. NTC, according to SSPL, completely lifted and illegally copied their registered label mark.
The two marks were visually and conceptually identical, according to SSPL, and deceptively similar to SSPL's mark. It was used in relation to equivalent or related products in order for NTC to trade and benefit from SSPL's goodwill. It was argued that the label's artistic work is covered under the Copyright Act, and that they were previous users of the registered label mark with copyright in the artistic work. They requested an emergency injunction for trade mark and copyright infringement, handing off, and the appointment of a Court Receiver to seize and seal NTC's goods bearing the offending or competing label mark and creative work. SSPL was denied copyright in creative works by NTC. The NTC argued that since the label mark is a licenced trade mark, it cannot be considered an artistic product. As a result, trade mark registration and copyright rights must be considered separate and distinct. It was argued that a person may have one or the other but not both.
NTC also cited the judgement of the co-ordinate bench in the case of Dhiraj Dewani, which held that registration under the Copyright Act is required before a plaintiff may seek civil or criminal relief under the Copyright Act. Dewani equated registration under the Trade Marks Act with registration under the Copyright Act, according to the Court. This was wrong, as he believed the two were completely different.