ORDER

% 08.01.2024

1. By way of the present appeal, the legal heirs of the Appellant, Mr. Amritpal Singh (since Deceased), assails order dated 12th May, 2014 passed by Registrar of Copyrights, whereby objections filed by the Appellant to Respondent No. 1’s application for registration of an artistic work titled “RAMAYAN (Label in both English & Hindi languages)” have been rejected [hereinafter, “impugned artwork”].1 Consequently, the artwork proceeded for registration.

2. Both the Appellant and Respondent No. 1 are engaged in the business of manufacture and sale of incense sticks (Agarbatis) and related goods. Appellant utilizes the label “BADHASH’S RAMAYAN” for their goods, while Respondent No. 1 uses the impugned artwork for their products. The 1 RoC No 53875/97/-CO-A dated 01st May, 1997. two conflicting labels are as follows:<br/>

Appellant’s artwork/ label Impugned artwork/ label

3. The Appellant opposes registration of the impugned artwork inter alia contending that Respondent No. 1 is not the original author of the said artwork, which was already in the public domain at the alleged date of its conception in 1981. Appellant also argues that the impugned artwork was adopted by Respondent No. 1 in 1987, and not 1981, as claimed by him. Further, Appellant asserts that they have been using the label “BADSHAH’S RAMAYAN” since 1986.

4. Respondents have not appeared despite service, and their right to file a reply was closed on 13th December, 2023.

5. Counsel for Appellant has drawn the Court’s attention to decision of the Supreme Court in Lal Babu Priyadarshi v. Amritpal Singh,2 whereby the Court has upheld refusal of registration of the impugned artwork as a trademark. In the said proceedings, the Assistant Registrar of Trademarks had rejected Appellant’s opposition to Respondent No. 1’s trademark application trademark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958.3 The Assistant Registrar held that Respondent No. 1’s device mark/ label consisted of a crown and the word “RAMAYAN”, which is capable of distinguishing the said mark and thus, proceeded to grant registration. This order of the Assistant Registrar was set aside by the Copyright Board in appeal. Aggrieved, Respondent No. 1 [Mr. Lal Babu Priyadarshi] preferred a Special Leave Petition before the Supreme Court. While deciding the petition, the Supreme Court concluded as under:<br/>

“22. There are many holy and religious books like Quran, Bible, Guru Granth Sahib, Ramayan etc., to name a few. The answer to the question as to whether any person can claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clearly 2 (2015) 16 SCC 795.

3 Repealed by Trademarks Act, 1999.

“NO”.

23. Moreover, the appellant has not been able to establish that the word "RAMAYAN" for which he has applied the trade mark had acquired a reputation of user in the market inasmuch as, we find that there are more than 20 traders in the city using the word "RAMAYAN" as a mark for the similar products and also in different parts of the country.

24. On a perusal of the artistic work said to have been created, there is no doubt that both the marks are identical in design, colour, scheme and the reproduction of photographs is in such a manner that an ordinary buyer would reasonably come to a mistaken conclusion that the article covered by one brand can be the article covered by the other. Both the parties have claimed to be manufacturing units engaged in certain goods.

25. Further, the respondent herein claimed that though he had been in the business since 1980, he had developed and published the artistic work in 1986 and has also been using the mark as a trademark and claiming use since 1986 whereas the appellant herein claimed use of the trademark since 1987. However, by filing an application to the concerned authority, the appellant has claimed the use since 1981. Further, in various pl