Delhi High Court: The present petition seeking rectification of the Register was filed by petitioner, Hugo Boss Trade Mark Management GMBH and Co. Kg under Section 50 of the Copyright Act, 1957 (‘the Act’) seeking expunction/removal of the copyright registration titled ‘ARAAS THE BOSS’ (‘impugned registration’). The impugned registration dated 07-01-2021 was obtained by Respondent 1, Sandeep Arora and was trading as ‘ARRAS THE BOSS’. Prathiba M. Singh, J.*, opined that petitioner would be aggrieved since the copyright registration would dilute and erode its rights in the mark ‘BOSS’ which formed an integral part of the work for which Respondent 1 had obtained registration. The Court held that Respondent 1’s registration was an entry, which was wrongly made and was also wrongly remaining in the register. The Court thus expunged and cancelled the copyright registration of ‘ARRAS THE BOSS’ mark from the Register of Copyrights.
Background
Petitioner was the registered proprietor of the trade marks ‘HUGO BOSS’, ‘BOSS’ and other ‘BOSS’ formative marks, which were first adopted by it in 1923. The said marks were adopted by petitioner in 1984 for marketing and selling fragrance and perfumes. Respondents 2 and 3 were the Registrar of Trade Marks and Registrar of Copyrights, respectively. Petitioner submitted that Respondent 1 was a habitual infringer and violator of rights in various marks. Petitioner further submitted that Respondent 1 had also applied for registration of the mark ‘BOSS’ as a trade mark, which was refused by the Registrar of Trade Marks by citing petitioner’s mark in Class 3.
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Petitioner’s Marks |
Respondents’ Mark |
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Analysis, Law, and Decision
The Court noted that Section 45 of the Act clearly specified that when any person was seeking copyright registration for artistic works used or potentially used in connection with goods or services, the application for copyright registration must include a statement acknowledging this use and the said application must include a certificate from the Registrar of Trade Marks that no Trade Mark identical or deceptively similar to the artistic work was registered or applied for by anyone other than the applicant.
The Court relied on Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488 and opined that Section 45 of the Act was inserted into the Act to prevent unscrupulous persons from copying label marks with the intention of passing off and taking shelter under a false claim of ownership of Copyright in an artistic work. The Court stated that Section 45 of the Act would be applicable in the present case as well.
The Court noted that despite the factual background of the present case, when Respondent 1 sought copyright registration for the impugned artistic work, he obtained a No Objection Certificate from the Registrar of Trade Marks and got his artistic work registered under the Act. The Court further noted that under Section 50 of the Act, any entry which was wrongly made and was remaining on the register, could be expunged by filing the rectification petition before the High Court and such a rectification petition, could thus be filed by any ‘person aggrieved’ by the registration.
The Court relied on Bar Council of Maharashtra v. M.V. Dabholkar, (1975) 2 SCC 702 and opined that petitioner was clearly a person aggrieved owing to its common law rights and statutory rights in the mark ‘BOSS’. The Court after considering that petitioner and Respondent 1 were operating in the same trade, i.e., perfumes and fragrances, opined that it was reasonable to believe that petitioner would be adversely affected by the impugned Copyright registration held by Respondent 1. Petitioner would be aggrieved since the copyright registration would dilute and erode its rights in the mark ‘BOSS’ which formed an integral part of the work for which Respondent 1 had obtained registration.
The Court observed that in terms of Section 13(1)(a) of the Act, in order to be able to obtain copyright protection, an artistic work would be required to meet the threshold of originality and opined that the impugned artistic work was definitely not an original artistic work and primarily consisted of the mark ‘BOSS’, which did not belong to Respondent 1 and even the colour scheme of petitioner was substantially imitated by Respondent 1, which would also supplement the finding that the impugned registration was not an original work.
The Court relied on Manju Singal v. Deepak Kumar, 2023 SCC OnLine Del 5503, wherein this Court emphasized that in discussions of ‘originality’ and ‘substantial part’, it was crucial to understand that if there was substantial similarity between two works, the later work could not be considered original. The Court opined that “registration of copyright could be granted only in respect of original works and it was inexplicable how the Trade Marks Registry issued a clear search report in respect of the impugned work, when in respect of Respondent 1’s trade mark application, petitioner’s marks were cited as conflicting. If any person or entity mis-described the work as an original work, when it was actually not and it was also a substantial imitation of a registered Trade Mark and label, such registration would be a registration wrongly remaining on the Register of Copyrights”.
The Court thus held that Respondent 1’s registration was an entry, which was wrongly made and was also wrongly remaining in the register. The Court further held that the artistic work ‘ARRAS THE BOSS’ was an imitative mark and artistic work and not an original artistic work. Moreover, Respondent 1 could not claim any rights in the mark ‘BOSS’ and thus, could not own a copyright registration in an artistic work, the essential feature of which was the mark ‘BOSS’.
The Court opined that there was no doubt that the grant of copyright registration was flawed due to severe procedural and substantive irregularities in view of the search report being clearly defective. Accordingly, the Court expunged and cancelled the copyright registration of ‘ARRAS THE BOSS’ mark from the Register of Copyrights.
[Hugo Boss Trade Mark Management GMBH & Co. Kg. V. Sandeep Arora, 2023 SCC OnLine Del 7956, decided on 08-12-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Petitioner: Rishi Bansal, Mankaran Singh, Advocates
For the Respondents: Harish Vaidyanathan Shankar, CGSC; Srish Kumar Mishra, Alexander Mathai Paikaday, Krishnan V., Advocates
