Point of Law : Intellectual Property Law – Copyright - The person applying for registration shall give notice of his application to every person who claims or has any interest in subject matter of the copyright or disputes the rights of the applicant to it.

JUDGMENT :

Heard. Rule. The Rule is made returnable forthwith. The learned advocate Mr. Shreyas Deshpande holding for Mr. S.B. Deshpande waives service for respondent No.1. The learned ASGI Mr. Talhar waives service for respondent No.2. At the request of the parties, the matter is heard finally at the stage of admission.

2. The petitioner is invoking the powers of this Court under Article 226 and 227 of the Constitution of India for impugning the judgment and order passed by Intellectual Properties Appellate Board, Chennai (herein after IPAB) in the matter of TP/26/2020/CR/WZ dated 31.12.2020.

3. The petitioner applied for and obtained a copyright of the package design for the name “Tiger No.5” and received a certificate of registration dated 18.11.2009 having No.A-87508/2009 in the name of M/s. Bharat Tea Suppliers of which the petitioner is the proprietor under Class 30 of the Copyright Act, 1957. The respondent No.1 also registered a copy right design under the name “Lion No.5” with registration No.A-88737/2010 on 30.08.2010. The respondent No.1 then filed a petition for rectification of the Copyright Register under Section 50 of the Copyright Act for expunging registration of the petitioner’s copyright by preferring the Appeal before the IPAB. By the impugned order the IPAB allowed the Appeal on the ground that the respondent No.1 was an aggrieved person and registration was obtained by the petitioner without compliance with the mandatory provision contained in Rule 16(3) of the Copyright Rules, 1958 (which is analogous to Rule 70(9) of the Copyright Rules, 2013).

4. The learned advocate for the petitioner submitted that the IPAB had not extended opportunity of being heard to it and passed the judgment which is ex parte. Petitioner’s request for adjournment was not considered and since the principles of natural justice have not been followed the impugned judgment is null and void.

5. The learned advocate further submitted that the petitioner’s copyright was registered first in point of time and there was no occasion or reason for it to know interest of the respondent No.1 so that Rule 16 (3) could have been complied with. The petition under Section 50 was preferred beyond the limitation period of 90 days. The learned advocate would also submit that the fact that the petitioner was acquitted of the charges for infringement of the copyright on a FIR lodged by the respondent No.1 in the year 2017 and the fact was not brought to the notice of the IPAB while it passed the impugned order. All these facts and circumstances were clearly overlooked by the IPAB. Besides being an order passed ex parte against the petitioner, it also suffers from the above vices and may be quashed and set aside.

6. The learned advocate for the respondent No.1 Mr. Deshpande referring to his affidavit-in-reply submits that it was a clear case demonstrating that the petitioner had obtained the copyright without compliance with the provisions of Rule 16(3) of the Rules. The respondent No.1 has been using the artistic work “Lion No.5” since the year 1976. The petitioner was aware about it. The respondent No.1 had even filed Regular Civil Suit No.3/2009 for trade mark and copyright infringement and passing off suit against the petitioner. The suit was decreed and the First Appeal No.2855/2013 preferred by the petitioner was also dismissed by this Court. This was sufficient to demonstrates that the petitioner was aware that the respondent No.1 was a person having interest in the subject matter of the copyright and therefore by virtue of Rule 16(3) it was imperative for the petitioner to have served a notice to the respondent No.1 before applying for registration of the copyright. Apart from noncompliance of such a mandatory provision, the petitioner succeeded in obtaining registration behind the back of the respondent No.1. The fact that the respondent No.2 got the artistic work registered at later point of time is inconsequential and the IPAB has rightly consider