A.K. SIKRI

1. Very brief yet crisp order dated 30th June, 2010 passed by the Copyright Board on an application preferred by the respondent no.2 herein under Section 50 of the Copyright Act, 1957 is the subject matter of the present appeal. The respondent no. 2 had filed the said application for expunction of registration number A-62685/02 granted by the Registrar in favour of the appellant herein. Before we take note of the basis on which expunction of the registration was sought, it would be apposite to find out what this registration is about. The appellant which is a registered partnership firm with its office in Kathmandu, Nepal claims that it is a well established and renowned firm engaged in the business of manufacturing and marketing of sports shoes and footwear since 1990. It also boost about the excellent quality of its product which has demand in Nepal as well as in India. The goods are manufactured and marketed under the trade mark „GOLD STAR alongwith the side trim device which is a part of their trade mark label applied to the footwear. The appellant also claims that it has spent considerable time and money to establish the aforesaid trade mark.

2. The side trim device of the sport shoes which is a part of the trade mark as well, is said to be the artistic work which was designed by one Shri Mukti Chakraborty for the appellant firm who assigned all rights therein to the appellant. Treating it to be an artistic work, the appellant applied for and was granted copyright therein namely side trim of its sport shoe for “GOLD STAR” in India vide Registration No.A-62685/2002 dated 11th October, 2002. The respondent herein felt aggrieved by the said registration and thus filed application under Section 50 of the Copyright Act for expunction thereof which, as stated above has been allowed by the Copyright Board, directing the Registrar to expunge the said entry from the Register. The order of the Board discloses that the expunction was sought on the following grounds:-

(a) Violation of rule 16 (3) of the Copyright Rules, 1958 since respondent was aware of the petitioner?s interest in the impugned work. Petitioner had opposed the application for registration of trade mark for the same mark GOLD STAR before the Registrar of Trade Marks;

(b) disentitlement under section 15 of the Copyright Act, 1957 since respondent has got registered the mark under the Design Act as design under registration number 178564 dated 27.1.1999;

(c) respondent had been using the mark as licensee of the petitioner. Thus the ownership of the work belongs to the petitioner.

3. While allowing the application, the entire reasoning is given in one para which reads as under:-

“4. It is manifest that the mark was intended to be used as affixation to shoes since respondent is in that business. In any case, use thereof would have been for more than 50 by now. Thus the impugned registration falls within the mischief of Section 15(2) of the Act. Name of the author mentioned in the impugned certificate is Mr. Mukti Chakraborty. Thus the first owner of the work is that person. Applicant for registration in the matter is the respondent, a firm. It is nowhere ascertainable from the pleadings including the written submissions now filed that the first author had assigned the work to the respondent. On this count also registration fails.” The aforesaid extract discloses following reasons which prevail with the Copyright Board while passing the impugned order:-

(i) The mark was intended to be used as affixation to shoes since the appellant is in that business. Thus the registration applied was for artistic work which was to be applied to goods;

(ii) Use thereof would have been for more than 50 y by now and, therefore, the registration falls within the mischief of Section 15(2) of the Copyright Act;

(iii) The name of the author is Shri Mukti Chakraborty who is first owner of the work and the appellant has nowhere shown that Shri Chakraborty had assigned this mar