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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 7^th September, 2022

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C.O. (COMM.IPD-CR) 17/2021

MOHD ERSHAD SOLE PROPRIETOR EK

AGENCIES

..... Petitioner

Through:

Mr. Febin M. Varghese and Mr. Dhiraj

A Philip, Advocates (M:9953418874)

Bhuvneshwar

Tyagi,

Advocate

(8826824663).

versus

REGISTRAR OF COPYRIGHTS & ORS

...... Respondents

Through:

Mr. Harish Vaidyanathan Shankar,

CGSC with Mr. Srish Kumar Mishra,

Mr.

Sagar

Mehlawat

and

Mr.

Alexander

Mathai

Paikaday,

Advocates. (M:9810788606)

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2.

The present petition has been filed under Section 50 of the Copyright

Act, 1957 (hereinafter ‘Act’) seeking rectification of the artistic work titled

“ASLI KESRI CHAI” bearing No. A-131509/2019 registered by Respondent

No.3 - Mr. Shazad Ali. The present petition has been preferred by M/s EK

Agencies, sole proprietorship firm of Mohd. Ershad Ansari. The case of the

Petitioner is that it has been involved in the business of trading, packing,

marketing and selling tea leaves since 1998. The Petitioner has been

continuously selling tea leaves using artistic work along with the trade mark

registered under Trade Mark No. 3035105 as a word mark in class 30 in

2022:DHC:3557

respect of tea. One of the products of the Petitioner is ‘HIGHGRON KESRI

CHAI’, which is sold in a distinctive yellow, green and red colour packaging.

3. It is the case of the Petitioner that the said mark along with the artistic

work is associated exclusively with the Plaintiff and its business. The

Petitioner’s artistic work ‘HIGHGRON’, which is a label, was registered with

the Registrar of Copyrights bearing registration no.124161/2018, on 27th

February, 2018.

4. The Petitioner is aggrieved by grant of copyright registration to the

Respondent No.3 on 21^st October, 2019 for its label “ASLI KESRI CHAI”.

The competing labels of the parties are set out below:

Petitioner’s registered work

Respondent’s artistic work

5. According to the Petitioner, Respondent No.3 is selling tea leaves

under a different name but has chosen to adopt packaging, which is almost

identical to that of the Petitioner. Respondent No.3’s copyright registration

2022:DHC:3557

was granted subsequent to the Petitioner’s registration, on 21st October, 2019

bearing registration no.A-131509/2019.

6. Both the parties had applied for grant of no objection certificate under

Section 45 of the Copyright Act and thereafter, obtained their respective

registrations. The Petitioner, after acquiring the knowledge of the Respondent

No.3’s copyright registration, filed objections dated 27^th December, 2019

with the Registrar of Trademarks, Mumbai seeking withdrawal of the no

objection certificate issued to Respondent No.3 under Section 45 of the

Copyright Act. The said objections were decided by the Trademark

Registrar on 23rd March, 2021 by which the NOC, which was granted to

Respondent No.3 was cancelled.

7. In addition to the cancellation order, an order was also passed on 16th

March, 2021 by the Registrar of Trade Marks refusing the trade mark

application of Respondent No.3 on the ground that the mark applied for by

Respondent No.3 under TM application No. 3681696 consisting of artistic

work is identical/similar to earlier trademarks on record and there is a

likelihood of confusion in the minds of the public. In view of this, ld. Counsel

for the Petitioner submits that as on date the NOC issued under Section 45

itself having been cancelled, the copyright registration cannot stand in favour

of Respondent No.3. On the other hand, ld. counsel for Respondent No.3

submits that his client has already sought review of the order dated 23rd

March, 2021 passed by the Registrar of Trade Marks by which the NOC was

cancelled.

8. Heard. As per the scheme of the Copyright Act, 1957 in order for