Copyrights and trademark registration in India
Copyrights and trademark registration – effect:
The comparative scopes of a copyrights and trademark registration are different, even though where a design on a wrapper is registered under the copyrights act, there is, to an extent, an overlapping between the two remedies. Some controversy is no doubt possible if the mere jurisdiction of the court to entertain an action for infringements of copyrights would also give the court the necessary jurisdiction to deal with the corresponding infringement of trademark, where both constitute, part of a composite suit. In view of the undoubted jurisdiction of this court in relation to the infringement of copyrights, court would be justified in granting injunction of both the trademark and the copyrights at this stage of the proceedings, particularly, where there is a specific averment in the plaint, whatever it may be worth, that the plaintiff has been selling the goods, inter alia, within the territorial jurisdiction of this court.
An injunction was granted restraining the defendant from manufacturing , selling, offering for sale, advertising or dealing in washing soap under the trademark 501, 507 or any other deceptively similar marks and wrappers as are identical with or deceptively similar to the wrappers of the plaintiff’s 501 half bar washing soap and from, in any manner, infringing the registered trademark and copyright of the plaintiff and from passing off its washing soap and business as the washing soap and business of the plaintiff during the pendency of the suit.
It is essential to the success of any claim in respect of passing off, based on the use of a given mark or get-up, that the plaintiff should be able to show that the disputed mark or get-up has become by user in this country distinctive of the plaintiff’s goods, so that the use in relation to any goods of the kind dealt with by plaintiff of that mark or get-up will be understood by the trade and public in this country as meaning that the goods are the plaintiff’s goods.
Section 134(c) relates to the passing off of the trademarks, whether registered or unregistered.
A person, who is admittedly the owner of a given trademark but under an agreement has assigned the rights of its use, when resorts to the use of such a trademark in breach of the agreement would not be the person who would be passing off the trademark of the other person rights flowing from the entitlement to use the property of others are specific civil rights and can be protected and enforced by grant of specific reliefs. Such protective remedies and actions are specific remedies available at general law and would not partake by themselves into actions for infringement or passing off within the specific contemplation of the provisions of section 105. Having not provided any infringement action with regard to unregistered trademark by section 134(a) and (b), the provisions of section 27(1) would hardly be appropriate to have relevance for finding forum.
In a suit for passing off or injunction on account of infringement of trademark, the cause of action partly or wholly can arise in a given jurisdiction only if it is the defendant who is proved to have directly made sale of the goods under the impugned trademark not to an individual consumer but to a distributor or a wholesaler or retailer and that such a sale should be at a commercial scale.
If the instinct case, there is no evidence whatsoever to show any transaction of sale by the defendant to any party. Under the impugned trademark at the place where the suit for passing off and injunction was instituted and so the court at that place had no jurisdiction to entertain the suit.
The suit was for passing off and not a suit for infringement of or in relation to any right. In a passing off action deceit is the main factor. Temporary injunction could not be granted because the decision of suit was pending.
Territorial Jurisdiction – Suit for infringement and passing off
It is a settled principal of law that cause of action is a bundle of material facts which are necessary for the plaintiff to prove his case so as to entitle him to succeed in a given case. However, each and every fact pleaded ipso facto does not lead to the conclusion that the facts so pleaded give rise to cause of action within the court’s territorial jurisdiction. Since the plaintiff has not been able to show prime facie from the averments contained in the plaint that it is carrying on its business within the local limits of territorial jurisdiction of Delhi, the provision of Section 134 of the Act do not come to his rescue. True, that copyright of the plaintiff as regards “RADHA KRISHNA with device of Radha Krishna Label” is registered at Delhi. Mere registration of the copyright at Delhi, as discussed above does not confer territorial jurisdiction on this Court. Plaint is absolutely silent as to how defendant has infringed his copyright specially when in his statement on oath, defendant has deposed that he never sold his goods in Delhi or anywhere else infringing the copyright of the plaintiff, “RADHA KRISHNA with device of Radha Krishna label” printed on the products sold by the defendant prima facie indicate that defendant has in no manner infringed the copyright of the plaintiff. To vest territorial jurisdiction in this court, plaintiff is required to specifically plead if defendant has infringed his copyright while passing off his goods as that of plaintiff at Delhi.
Since in this case the jurisdiction has been invoked by the plaintiff by joining two causes of action in terms of provisions of CPC, the same would not mean that thereby the jurisdiction could be conferred upon the court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum in a given case can be adopted by the plaintiff, if both the causes of action arose within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. Jurisdiction of this court has been invoked by the plaintiff by joining two causes of action. i.e., infringement of his registered trademark and infringement of registered copyrights, when, none of the causes of action arose within the jurisdiction of the court.
Application to being on record fourteen volumes of documents
Moreover, in the present case on perusal of applications filed by petitioners plaintiffs under Order 7 Rule14 CPC, I am of the view that discretionary power with the trial court to file additional documentary evidence has been rightly refused. I may mention that in the said applications filed by petitioners-plaintiffs, the only reasons given for filing of those documents at a belated stage was, “on account of human error and inadvertence and oversight that the said documents escaped the notice of the Advocate”. 2009 (41) PTC Consequently, it is not open to the petitioners-plaintiffs to now content in the present proceedings that the documents could not be filed initially as they were not in their power and possession. In fact, from perusal of documents sought to be filed by the petitioners and plaintiffs, it is apparent that majority of these documents were all throughout in power and possession of petitioners-plaintiffs. On a careful perusal of the file, I am also agreement with Mr. Mukund’s argument that the present two applications had been filed by petitioners-plaintiffs under Order 7 Rule 14 CPC and under section 65 of Indian Evidence Act. I further agree with the trial court that the intent in filing the present petition was to somehow delay the disposal of the suit despite a categorical direction by Hon’ble Supreme Court on 1st October, 2008 to dispose of the same expeditiously preferably within six months. Accordingly, in my view, present applications are not even bona fide. Consequently, the case law cited by the petitioners is clearly inapplicable to the facts of the present case. For Trademark Registration in Cochin, kindly visit our site and we will make easy to your registration process.