In order to satisfy the conditions of Section 13 (1) (a) of the Act, an artistic work would have to satisfy the test of originality. Copyright registration can only be granted to original artistic works. Registration of copyright cannot be granted to works which are a reproduction or imitation of other original works and the same was upheld by High Court of Delhi through the learned bench led by Justice Amit Bansal in the case of THE POLO/LAUREN COMPANY L P vs. SANDEEP ARORA & ANR. on 01.02.2022.
The facts of the case are that the petitioner is the registered proprietor and user of the mark ‘POLO SPORT’. The trademarks of the petitioner are formative in nature and the petitioner has created various combinations and versions of the same and the aforesaid trademarks have acquired immense good will and reputation over the years. The artistic work adopted by the respondent in the impugned copyright registration is an infringement of the petitioner’s literary and artistic copyright as the respondent has substantially reproduced in material form many aspects of the petitioner’s registered marks.
This rectification petition has been filed seeking removal of the registration made in the Register of Copyright in respect of impugned artwork of the respondent namely, ‘SPORTS POLO’. The petitioner prays that the Registration Certificate granted in favour of the respondent should be cancelled.
The petitioner’s counsel contended that the respondent misappropriated the words ‘Polo’ and ‘Sport’ in their entirety. It was further submitted that the work of the respondent was not an original literary/artistic work in respect of Section 13 (1) (a) of the Act. Counsel argued that Registry failed to act in terms of Section 45 of the Act as a careful search of the Register of Trademarks would have clearly indicated the similarity between the petitioner’s trademarks in respect of which the copyright also subsists in the respondents’ artistic work.
The respondent’s counsel stated that respondent has been using the words ‘ARRAS SPORTS POLO’ since the year 2020 in their perfumery business and their copyrighted mark is substantially different from that of the petitioner’s marks in respect of logo. The respondent is using four horses with riders on them, who are not playing the game of polo and therefore, the same is very different from the registered trademarks of the petitioner.
In view of the facts and circumstances of the cases, the Court allowed the present petition as the artistic works in the logo of the respondent was almost an imitation of the trademarks of the petitioner and was not an original artistic work for the purposes of registration under the Act and deserved to be expunged from the Register of Copyrights.
The Court observed that, “In order to satisfy the conditions of Section 13 (1) (a) of the Act, an artistic work would have to satisfy the test of originality. Copyright registration can only be granted to original artistic works. Registration of copyright cannot be granted to works which are a reproduction or imitation of other original works”.
Judgment reviewed by – Shristi Suman