The Delhi High Court, in the case of Mohd Ershad Sole Proprietor Ek Agencies V. Registrar of Copyrights & Ors., reiterated that it was mandatory to obtain a No Objection Certificate (NOC) from the Trademark Office under Section 45(1) of the Copyright Act, 1957 (Act), for registration of the artistic work used for goods or services.
In the instant case, the Petitioner was involved in trading, packing, marketing and selling tea leaves since 1998 using the artistic work titled “Kesri Chai” along with the trademark “Highgron”. The Petitioner sought the rectification of copyright registration of the artistic work titled “ASLI KESRI CHAI” granted to the Respondent in 2019 since it had adopted the distinctive yellow, green and red colour packaging of the Petitioner, which was likely to cause confusion in the minds of the consumers and dilute the Petitioner’s artistic work and goodwill it had created.
Both parties had obtained the NOC under Section 45 of the Act for their respective registrations. Aggrieved by the grant, the Petitioner had filed objections with the Registrar of Trademarks to withdraw the NOC granted to the Respondent, which was duly cancelled. The Respondent filed for a review of the order, and the Petitioner approached the Court to further revoke the Respondent’s copyright registration.
The Court observed that the Respondent’s artistic work was identical to the Petitioner’s in colour and substance; therefore, the registration stood revoked. However, the Respondent could proceed with the review filed with the Registrar of Trademarks, and if the outcome was in its favour, it was free to use the mark “ASLI KESARI CHAI” along with any label or artistic work, as long as it was not an imitation of the Petitioner’s label or packaging.