1998 Supreme(Del) 762

High Court Of Delhi
ZIFF DAVIS INC. - Appellant
Versus
D.K.JAIN - Respondent
Decided On : 09/23/1998

The registration of a trade mark under the Press and Registration of Books Act, 1867, does not confer ownership rights on the trade mark.

Headnote:

COPYRIGHT - INJUNCTION - PASSING OFF - TRADE MARK - OWNERSHIP - REGISTRATION - DESCRIPTIVE WORDS - GENERIC WORDS - BALANCE OF CONVENIENCE - INTERNATIONAL COPYRIGHT ORDER, 1991 - PRESS AND REGISTRATION OF BOOKS ACT, 1867 - INDIAN CONTRACT ACT, SECTION 24 - CONSTITUTION OF INDIA, ARTICLES 19 (1) (G) AND 19 (1) (A).

Fact of the Case:

Plaintiff, a publishing company, entered into a license agreement with the defendants to publish an Indian edition of its magazine, PC Magazine, and to use the mark "PC Magazine" in relation thereto. The agreement expired and the defendants continued to use the logo and copyright mark of the plaintiff. The plaintiff filed a suit for permanent injunction restraining infringement of copyright, passing off, breach of contract, rendition of accounts of profit, delivery, etc.

Finding of the Court:

The court held that the plaintiff was the owner of the copyright in the logo and that the defendants were using the same under a license. The court also held that the words "PC", "week", "magazine", "computer", "shopper", "user", and "internet" were not descriptive or generic words and that the plaintiff had acquired a secondary meaning in relation to certain goods and services. The court further held that the defendants were not the owners of the trade marks and that the registration of the PC Magazine under the Press and Registration of Books Act, 1867, did not confer ownership rights on the trade mark. The court also held that the agreement was not void under Section 24 of the Indian Contract Act and that it did not violate Articles 19 (1) (g) and 19 (1) (a) of the Constitution of India.

Issues: 1. Whether the plaintiff was the owner of the copyright in the logo and whether the defendants were using the same under a license? 2. Whether the words "PC", "week", "magazine", "computer", "shopper", "user", and "internet" were descriptive or generic words? 3. Whether the defendants were the owners of the trade marks? 4. Whether the registration of the PC Magazine under the Press and Registration of Books Act, 1867, conferred ownership rights on the trade mark? 5. Whether the agreement was void under Section 24 of the Indian Contract Act? 6. Whether the agreement violated Articles 19 (1) (g) and 19 (1) (a) of the Constitution of India?

Ratio Decidendi: 1. The court held that the plaintiff was the owner of the copyright in the logo and that the defendants were using the same under a license based on the following: - The logo was an artistic work within the meaning of Section 2 (c) of the Copyright Act. - The defendants were using the same under the license. - The logo was being used by the plaintiff not only in India but in numerous other countries as well. - In terms of clause 3 of the International Copyright Order 1991, all the provisions of Copyright Act, 1957 excepting those of Chapter VIII: and those other provisions which apply exclusively to Indian works, shall apply to any work first made and published in a country mentioned in part I, II, III or IV of the Schedule, in like manner, as if it was first published in India. 2. The court held that the words "PC", "week", "magazine", "computer", "shopper", "user", and "internet" were not descriptive or generic words and that the plaintiff had acquired a secondary meaning in relation to certain goods and services based on the following: - The words individually are certainly descriptive words but the moment they are read together they no more remain just descriptive for by now the title PC Magazine has acquired a definite marketable value for those who are dealing in computers; and who are somehow or other interested in computer education. - The title PC Magazine individulself implies that the PC Magazine India is a subsidiary of some foreign corporation the business in India. - An estopped from claiming that the mark is descriptive or that confusionplace because he himself has used it as a trademark. - Even words like "best" (Bombay Electric Supply and Tramway Co.) are capable of acquiring a secondary meaning and becoming distinctive in relation to certain goods and services. 3. The court held that the defendants were not the owners of the trade marks based on the following: - The registration of the PC Magazine under the Press and Registration of Books Act, 1867, by itself would not confer the ownership right on the trade mark. - The source of authority to use the trade mark was only the license in view of the correspondence and the agreement. - The moment license ceases the defendants being just a licensee could not claim ownership of the trade mark. - Since PC Magazine was published under the license granted by the plaintiff company the defendants cannot use the trade mark. 4. The court held that the registration of the PC Magazine under the Press and Registration of Books Act, 1867, did not confer ownership rights on the trade mark based on the following: - The registration of the PC Magazine under the Press and Registration of Books Act, 1867, by itself would not confer the ownership right on the trade mark. - The source of authority to use the trade mark was only the license in view of the correspondence and the agreement. - The moment license ceases the defendants being just a licensee could not claim ownership of the trade mark. - Since PC Magazine was published under the license granted by the plaintiff company the defendants cannot use the trade mark. 5. The court held that the agreement was not void under Section 24 of the Indian Contract Act based on the following: - The agreement was entered into 9th April, 1995, therefore, subsequent decision would not enure to the benefit of the respondent. - Moreover no notification and/or enactment has been shown in this regard. 6. The court held that the agreement did not violate Articles 19 (1) (g) and 19 (1) (a) of the Constitution of India based on the following: - The agreement puts restraint on trade and thus violates Article 19 (1) (g) and 19 (1) (a) of the Constitution has also got no force at all for it is a reasonable restraint invited by the defendant himself by entering into the license agreement with the plaintiff.

Final Decision: The court granted an injunction restraining the defendants from using the stylized logo and trade mark PC. Magazine, Computer Shopper, Internet user and PC Week, subject to the condition that the plaintiff furnishes a bank guarantee of Rs. 5.00 lakhs to compensate the defendants in case the suit itself is finally dismissed, for the loss which the defendants may suffer due to this injunction order.