Delhi High Court: In a case concerning rectification of the Register of Copyrights in respect of an artistic work incorporating the “CAMEL” mark, a Single Judge Bench of Tushar Rao Gedela, J., held that mere registration of a trade mark could not, by itself, establish the proprietor thereof as the “first owner” of copyright in the underlying original artistic work. Emphasising that the petitioner was required to establish, as a fact, its first ownership and first publication of the original artistic work under Section 17, Copyright Act, 1957, the Court held that the petitioner’s reliance on prior trade mark registrations and books relating to the history of the “CAMEL” brand, without duly proving the relevant documents, was insufficient to discharge the initial burden of proof.
The Court further held that alleged admissions made in a separate trade mark infringement suit could not establish the petitioner’s copyright ownership, and dismissed the petition seeking rectification and expunging of the impugned copyright registration.
Background
The present petition was filed under Section 50, Copyright Act, 1957 seeking rectification of the Register of Copyrights in respect of Copyright Registration No. A-54242/97 dated 22 October 1997 for the artistic work 
. Petitioner 1, Japan Tobacco Inc., and Petitioner 2,, Worldwide Brands Inc., asserted rights, title and interest in various “CAMEL” artworks/trade marks including 
, 
(1989), and 
(1989) which, according to them, had been in use since 1913 in relation to tobacco products and since the late 1970s in relation to non-tobacco goods. The petitioners contended that the impugned artistic work, purportedly authored by Mrs Veena R. Hinduja , in 1992, had been copied from their significantly prior “CAMEL” artworks/trade marks. Relying upon their prior declarations and trade mark registrations in India and various other countries, the petitioners alleged that the respondent had lifted elements from their pre-existing artworks and superimposed them to arrive at the impugned artwork. Consequently, claiming to be “persons aggrieved” within the meaning of Section 50 of the Act, the petitioners sought rectification of the Register on the ground that Copyright Registration No. A-54242/97 was an entry wrongly made in, or remaining on, the Register of Copyrights and was liable to be expunged.
The petitioners contended that Section 40, read with the International Copyright Order, 1999, entitled them to challenge the registration on the basis of publication in Berne Convention countries, that the impugned work lacked originality, and that Section 45(1) and Rule 70 of the Copyright Rules, 2013 had not been complied with. Respondent 1 submitted that it had adopted the ‘CAMEL COLLECTION’ label in 1992 and obtained copyright registration in 1997, that the petitioners had not sold garments in India, and that they were not ‘persons aggrieved’.
Analysis
The Court held that the essential issue in determining copyright in an artistic work was the establishment of an “original artistic work” and the identity of its “first owner” under Section 17, Copyright Act, 1957. Mere registration of a mark under the Trade Marks Act, 1999, though capable of lending some credibility, could not by itself establish the proprietor of the trade mark as the first owner of copyright in the artistic work embodied therein. The Court further observed that, notwithstanding the transborder applicability of copyright under Section 40 of the Act read with the International Copyright Order, 1999, the petitioner was required to establish, as a fact, that it was the first owner by virtue of first publication of the original artistic work. The Court noted that Section 17 does not postulate any deeming fiction, so first ownership had to be established as a fact.
The petitioner relied primarily upon certain books relating to the history of the “CAMEL” brand and claimed that its artistic work had been used and improvised over the years; however, save and except for the narration contained in the said books, no evidence was placed on record to discharge the statutory onus under Section 17. The photocopies of the relevant pages of the books were on record but were neither brought to the Court’s attention nor proved in accordance with law, although Respondent 1 had denied the documents by its affidavit of admission/denial dated 9 March 2023. They also did not establish first publication or first ownership. Consequently, the petitioner failed to discharge the initial burden of proof, and the presumption under Section 48 of the Act operated in favour of Respondent 1. The Court noted that, under Sections 101 to 106 of the Evidence Act, 1872, the burden shifts to the other side only once the party bearing the initial onus has discharged it.
The Court further held that the alleged admissions made by Respondent 1 in the written statement filed in a separate trade mark infringement suit could not assist the petitioner, as the said suit concerned trade mark infringement and not copyright. The alleged admissions were neither unequivocal nor unambiguous or clear and, at best, permitted only an inferential analysis, which could not establish the petitioner’s first ownership of the original artistic work. The Court also distinguished the territoriality principle applicable to trade marks from the transborder principle recognised under the copyright regime.
Decision
In view of the petitioner’s failure to establish itself as the first owner of the original artistic work in the “CAMEL”/“CAMEL COLLECTION” marks, the Court held that it could not conclude that the impugned copyright registration was wrongly remaining on the Register of Copyrights. The issue concerning alleged violation of Section 45(1) of the Act read with Rule 70, Copyright Rules, 2013 was held to be academic in view of the petitioner’s failure to establish its copyright ownership.
Accordingly, the petition seeking rectification of the Register of Copyrights and expunging/removal of the impugned registration was dismissed. The Court clarified that its observations concerning CS(COMM) 644/2018, Japan Tobacco v. D. Jhamnadas, would not amount to an expression on the merits of the said suit.
[Japan Tobacco Inc v. Central Wearhouse, C.O.(COMM.IPD-CR) 814 of 2022, decided on 5-10-2026]
Advocates who appeared in this case:
For the Petitioner: Peeyoosh Kalra, Gaurav Mukerjee, Saumya Tripathi, Meghana Nair and Rohan Kapoor, Advocates
For the Respondent 1: Navroop Singh and H.P. Singh, Advocates
