‘Not an original work u/s 13(1)(a) of Copyright Act’; Delhi HC directs Registrar of Copyrights to expunge copyright registration for work ‘GOORCHARRE MAST SEVIAN’

Delhi High Court: In a case wherein the petitioner, Manju Singal Proprietor Singla Food Products had filed the present petition under Section 50 of the Copyright Act, 1957 (‘Copyright Act’) seeking rectification of the Copyright Registration for the work ‘GOORCHARRE MAST SEVIAN’, Prathiba M. Singh, J.*, opined that apart from the substantial similarity, Respondent 1’s work was also a slavish imitation of the petitioner’s work itself and the distinguishing elements, if any, did not affect the substantial similarity and the imitation that Respondent 1 had resorted to. The Court held that Respondent 1’s registration having been wrongly applied for as an original work deserved to be rectified and expunged from the Register of Copyright in accordance with Section 50 of the Copyright Act.

Background

The petitioner was in the business of manufacturing, marketing, and selling snack food products, confectionery and other namkeen edible products under the mark ‘GULCHHARE’, which was adopted in 2009 and along with the said mark, the petitioner created an artistic artwork and packaging for the mark which had been used since 2009. The petitioner claimed that it was aggrieved by the impugned registration of the artwork ‘GOORCHARRE’ by Respondent 1, on the ground that the said registration was for an identical artwork, using the same combination of colours and artistic style of writing.

Analysis, Law, and Decision

The Court noted that the petitioner’s copyright registration application was filed on 24-04-2014 for the artistic work titled ‘GULCHHARE’ for the product mast sevian and on the other hand, the impugned registration of Respondent 1 had been granted on 29-04-2019 for the published work titled ‘GOORCHARREY LABEL’.

Comparative table of the artistic works of Petitioner and Respondent 1

The Court observed that the expression ‘GULCHHARE’ in Hindi had a connotation of enjoyment, mauj masti, etc and it could in some context also have negative connotation. The Court further observed that the petitioner’s product was also targeted at children, thus, it might be used to depict masti and enjoyment while consuming sevian i.e., namkeen. The Court opined that the identity/similarity between the two packaging’s included the following features:

1. The name ‘GULCHHARE’ versus ‘GURCHARRE’;

2. The use of the blue background with a yellow and pink colour combination;

3. Depiction of stars in the background that too at almost the same location;

4. The use of the expression ‘mast sevian’;

5. The use of coins and currency denominations of the identical value, that too at almost the same location on the label; and

6. The use of the word ‘inami’ in an oval shaped yellow device;

The Court opined that Respondent 1 had merely copied all the essential elements of the said artistic work. The Court noted that the petitioner also owned a trade mark registration in the word ‘GULCHHARE’ dating back to 19-03-2012 in respect of products in Class 30 including snack products, confectionery, etc.

The Court noted that under Section 50 of the Copyright Act, any work which was wrongly entered into the register, could be rectified/expunged at the instance of any person aggrieved. The Court observed that Respondent 1’s packaging was nothing but a substantial reproduction of the petitioner’s packaging and also a colourable imitation of the same. Therefore, considering the petitioner’s packaging/label had been imitated by Respondent 1, the Court opined that the petitioner was clearly a person aggrieved.

The Court also opined that in terms of Section 13(1)(a) of the Copyright Act, in order to be capable of getting copyright protection, an artistic work would be required to meet the threshold of originality, however, Respondent 1’s artistic work was nothing but a substantial imitation of the petitioner’s work, which would show that the same was therefore not an original work. The Court further opined that if anyone mis-described the work as an original work, when it was not and was a copy of another work, such registration would be wrongly remaining on the Register of Copyrights.

The Court relied on Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488 (‘Marico Ltd. Case’) wherein it was held that when two labels or artistic works were compared, to determine if they were original, the broad features of both the labels/works were to be compared. In Marico Ltd. Case (supra), it was also held that colour scheme and objects/items used in the artistic work were also a factor while determining substantial similarity/reproduction and colourable imitation.

The Court opined that in the present case, apart from the substantial similarity, Respondent 1’s work was also a slavish imitation of the petitioner’s work itself and the distinguishing elements, if any, did not affect the substantial similarity and the imitation that Respondent 1 had resorted to. The Court held that Respondent 1’s registration having been wrongly applied for as an original work deserved to be rectified and expunged from the Register of Copyright in accordance with Section 50 of the Copyright Act.

The Court allowed the petition and issued a direction to the Registrar of Copyrights to rectify the register by expunging Respondent 1’s copyright registration for the work ‘GOORCHARRE MAST SEVIAN’.

[Manju Singal v. Deepak Kumar, 2023 SCC OnLine Del 5503, decided on 06-09-2023]

Advocates who appeared in this case :

For the Petitioner: Ajay Amitabh Suman, Mankaran Singh, Risabh Gupta, Advocates instructed by S K. Bansal, Advocate

For the Respondents: Nidhi Raman, CGSC; Zubin Singh, Advocate

*Judgment authored by: Justice Prathiba M. Singh