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2025 Supreme(Online)(Del) 2635
IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J
DWARKA MATLANI – Appellant
Versus
JAY DARYANI AND ANR – Respondent
C.O.(COMM.IPD-CR)-704/2022
For the Appellants/Petitioners: Mr. Rajesh Sharma
For the Respondents: None
The court emphasized that copyright registration obtained through deception regarding true ownership lacks legal standing.
Headnote:In the present case, the petitioner sought cancellation of a copyright registration for the label 'ROYAL' under the Copyright Act, 1957 citing prior use of similar artistic works. The court found the petitioner's claims substantiated by evidence of prior adoption. The court determined the respondent's registration incurred through concealment of material facts regarding originality and ownership of the artistic work. The court observed the respondent's label was a slavish imitation of the petitioner's, indicative of an intent to ride the goodwill associated with the prior mark. The petition was allowed, leading to the removal of the respondent's copyright registration from the Register, as per the court's order dated January 31, 2025.
1. The present rectification petition has been filed by the petitioner for cancellation of the Copyright registered vide entry number A – 129092/2019 titled ‘ROYAL’ dated 2nd May 2019.
2. The petitioner is engaged in the business under the trade name “Kishan Foods Products,” operating in Rajasthan. The petitioner manufactures and markets various products, including supari, sweet supari, mouth fresheners, Aam pachak tablets, and non-medicated confectionery, under the trademark ‘RAHUL’.
3. In 1997, the petitioner adopted the mark “Rahul Aam Pachak Tablet”
Signature Not Verified Digitally Signed C.O.(COMM.IPD-CR) 704/2022 Page 1 of 8 along with its distinctive label and artwork and and has continuously been using these labels/artwork for marketing its Aam Pachak tablets and non-medicated confectionery.
4. The petitioner has obtained registration for its trademark/ label/ artwork on 17th August, 2007, under registration number
1591507 in Class 30.
5. It is stated that the petitioner has widely advertised its labels/artworks through various newspapers. Copies of these advertisements are annexed with the petition.
6. It is stated that the petitioner is the prior adopter and user of the Signature Not Verified Digitally Signed C.O.(COMM.IPD-CR) 704/2022 Page 2 of 8 trademark, labels/ artworks, which constitute an original work under the Copyright Act, 1957 . Moreover, the petitioner was the first to publish the said label/artwork.
7. By virtue of prior adoption, continuous use, advertisement, and registration, the petitioner claims exclusive rights over the labels /artworks and
8. On 3rd April 2019, the petitioner discovered that the respondent no.1, Jay Daryani, trading as Rekha Trading Co, was using an identical or deceptively similar trademark/ label/ packaging for similar goods.
9. Thereafter, the petitioner issued a legal notice dated 3rd April, 2019 to respondent no.1 to cease and desist the use of the impugned label/
packaging/ artwork .
10. Respondent No. 1, who is an ex-employee and nephew of the petitioner, replied to the legal notice on 12th April, 2019, denying the petitioner’s claims and stating that the adoption of the mark ‘ROYAL AAM Signature Not Verified Digitally Signed C.O.(COMM.IPD-CR) 704/2022 Page 3 of 8 PACHAK TABLET’ and label/packaging by respondent no. 1 was bonafide and honest.
11. The petitioner discovered that the respondent no.1 had applied for the registration of the impugned label/ packaging under application number 3865742 titled ‘ROYAL’ on 20th June 2018, in Class 30 on a “proposed to be used” basis. Later, the said application was advertised in Trade Marks Journal No. 1999 on 10th May, 2021. The petitioner also filed an opposition No. 1111166 against the application and since no counter-statement was filed by respondent no.1, the application was abandoned.
12. The petitioner also found that the respondent no.1 also applied for copyright registration of the impugned label, artwork, and packaging under diary number 2765/2019 dated 19th February, 2019.
13. On 11th April, 2019, the petitioner filed an objection to the said application. Despite these objections, respondent no.2/Registrar of Copyrights granted copyright registration to the respondent no.1 on 2nd May, 2019.
14. Due to the respondent’s refusal to comply with the petitioner’s requisitions, the petitioner filed a suit for copyright infringement in the District Court, Bharatpur, Rajasthan, which was contested by the respondent Signature Not Verified Digitally Signed C.O.(COMM.IPD-CR) 704/2022 Page 4 of 8 no.1.
15. On 14th June, 2019, the learned Additional District Judge, Bharatpur granted an interim injunction under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 (‘CPC’), restraining respondent no.1 from using the impugned label, artwork, and packaging during the pendency of the suit.
16. On 24th June, 2019, the petitioner published the injunction granted vide order dated 14th June 2019 in Dainik Bhaskar newspaper in Bharatpur.
