Copyright Registration Per Se Is Not Sufficient To Establish User Claim In Trademarks

Author:R. K Dewan & Co
Profession:R. K. Dewan & Co

In India, trademark labels can also be registered under the Copyright Act irrespective of whether such labels have any artistic content. Often these labels registered under the copyright law are used by their owners in infringement and passing off proceedings under trademark law. In M/S Khushi Ram Behari Lal v. M/S Jaswant Singh Balwant Singh W.P.(C) 7983/2012 & CM APPL. 19969/2012, the Delhi High Court held that copyright registration, cannot per se be a proof of 'Use' of a trademark. Both the parties to this Writ Petition are engaged in processing, marketing and exporting rice in India.

While the Petitioner, i.e. M/s Khushi Ram Behari Lal (“KRBL”) applied for registration of a device mark (“KRBL's mark”), the Respondent had already registered the word mark “TRAIN” basis which it opposed the KRBL's TM registration application. The Respondent placed on record, inter alia, invoices, bills, its copyright registration certificate for its mark “TRAIN”, etc. in support of its claim of continuous use of the mark over the years. Respondent stated that since both the parties dealt in the same goods (i.e. rice), there is likelihood of confusion amongst customers about the identity of the goods. Both, the Trademark Registry in India and the Intellectual Property Appellate Board (“IPAB”) refused the registration of KRBL's mark.


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