Copyright registration is not mandatory under the Copyright Act, 1957: Bombay High Court

While hearing  an interim application to a suit for trade mark and copyright infringement, the Bombay High Court held that Copyright registration is not mandatory under the Copyright Act, 1957 through Justice G.S. Patel in the case of Sanjay Soya (P) Ltd. v. Narayani Trading Company (INTERIM APPLICATION (L) NO. 5011 OF 2020) IN (COMMERCIAL IP SUIT NO. 2 OF 2021)


Sanjay Soya has been producing and distributing edible oils, particularly soyabean oil, for many years. Narayani Trading is a one-person business. Sanjay Soya asserted that it is the successor-in-title of one SK Oil Industries and that in May 2003, SK Oil adopted the label, mark, and creative work in reference to edible oil that has unique get up, design, and schematic arrangements. Recital (2) of the Deed of Assignment indicated that SK Oil conceptualized, constructed, designed, and developed a SOYA DROP label, which is the artwork at issue in this case.

Sanjay Soya’s counsel, Mr Khandekar, argued that the label is an original artistic work within the meaning of Section 2(c) of the Copyright Act. Furthermore, it was said that Sanjay Soya has publicly and persistently utilized the mark, with minor variations, since its introduction. 

Sanjay Soya alleged that Narayani Trading completely stole and illegally reproduced his registered label mark and the copyright-protected artistic work on the label. It claims that the Narayani Trading label is a replica and unauthorized duplicate of a significant portion of Sanjay Soya’s unique and distinctive artwork.

It was argued that Narayani Trading’s use of the label mark is dishonest, not genuine, with an ulterior goal, and designed to trade on again and redeem Sanjay Soya’s business’s goodwill, recognition, and reputation.

Mr Burad, counsel for Narayani Trading, asserted that the two labels are completely separate and that no one will confuse one for the other. The Court denied this and clarified that the major characteristics, numbers, or elements identified by the Bench in Sanjay Soya’s Label all appear with slight differences in Narayani’s Trading Label.


Bench stated that it is impossible to believe, provided Sanjay Soya’s presumptively known product prominence and reputation, that Narayani Trading was unaware of Sanjay Soya’s market presence, and that Narayani Trading does not show that the artistic work and label were in use before Sanjay Soya or SK Oil began using it.

The bench held that knowing of Sanjay Soya’s presence in the market,, Narayani Trading illicitly and without bona fide intent adopted a label strikingly similar to that of Sanjay Soya; and in doing so, copied substantially, if not wholly, the artistic work comprised in Sanjay Soya’s trade dress and packaging, and of which copyright Sanjay Soya through its predecessor-in-title is indeed the owner.

In Erven Warnink v. Townend & Sons Ltd. [1979], the Court relied on the five rules for ‘passing off’ activities. In addition, Reckitt & Colman Products Ltd v. Borden Inc., [1990] 1 All of ER 873 simplified these into the three criteria in tortious activities in passing off known as the “Classic Trinity”:

(i)goodwill owned by a claimant;

(ii) misrepresentation; and

(iii) damage to that goodwill.

It was held that the plaintiff does not need to demonstrate actual or particular loss; a reasonably foreseeable likelihood suffices. Finally, in closing the issue, the Bench stated that looking at the two packages from which the photographs were created at the outset, all the Court can conclude is “which is whose?” I’m not sure.”

The Court levied costs on Narayani Trading after finding their defence to be completely baseless and probably spurious.


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