S.45 Copyright Act Safeguards Trademark Artwork From Similar Registration: Delhi High Court Directs Removal Of Logo Copying Heineken’s Tiger

Applying this principle, the Court directed removal of the impugned artistic work containing a tiger device from the Register of Copyrights, finding that it substantially copied the logo associated with the petitioner Heineken’s beer brand.

The Court was hearing a petition seeking rectification of the Register of Copyrights by deletion of the copyright registration granted to the respondent for an artistic work titled “Shree Sakshat.”

A Single Judge Bench of Justice Tushar Rao Gedela observed that “in cases where there is an overlap of the nature like in the present case, the proviso to Section 45 of the Act carves out a procedure where the original artistic work in a mark registrable under the Trade Marks Act, 1999 may also be protected as against a person or an entity, which may be seeking registration of a similar artistic work under the Act, …one can perceive that the proviso is inserted to prevent such mischief”.

Background

The petitioner, a Singapore-based company engaged in the manufacture and sale of beverages, including beer, claimed ownership of the well-known TIGER beer brand and its associated device mark depicting a tiger. The logo, according to the petitioner, constituted an original artistic work created by its design team and had been used internationally for several decades.

The petitioner asserted that the TIGER device mark had been registered across numerous jurisdictions and had also been registered in India under the Trade Marks Act for goods falling in Class 32 relating to beer and malt beverages. The petitioner relied on its extensive trademark registrations and long-standing use of the mark to establish prior rights.

The dispute arose when the respondent obtained copyright registration in 2017 for an artistic work titled “SHREE SAKSHAT.” According to the petitioner, the impugned logo reproduced the tiger device forming the central element of the petitioner’s mark and merely added the letter “V” in the background along with the words “SHRI” and “SAKSHAT.”

The petitioner contended that the impugned work was neither original nor independently created and had been adopted by copying the TIGER device in its entirety. It was further alleged that the respondent had falsely declared that the work was unpublished at the time of the copyright application.

The petitioner, therefore, approached the High Court under Section 50 of the Copyright Act seeking rectification of the Register of Copyrights and removal of the impugned registration.

Court’s Observation

The Court examined the nature of the two competing logos and observed that the impugned mark reproduced the distinctive features of the TIGER logo used by the petitioner.

The Court noted that the tiger depicted in the petitioner’s logo was characterised by specific artistic elements, including an outstretched front paw, an open mouth with visible teeth, a head turned to the left, and an upturned tail. A comparison of the two marks revealed that these features had been replicated in the respondent’s artistic work.

The Court held that the addition of the letter “V” in the background and the words “SHRI” and “SAKSHAT” did not alter the essential character of the mark. The tiger device remained the dominant feature of the impugned logo.

The Bench further observed that the petitioner possessed multiple registrations for the TIGER device mark across jurisdictions, including India. These registrations, coupled with prior publication and use of the artistic work, established the petitioner’s rights over the logo.

Addressing the legal framework, the Court explained that although copyright and trademark operate under different statutory regimes, an overlap may arise when an artistic work forms part of a mark capable of registration under the Trade Marks Act.

In such situations, the proviso to Section 45 of the Copyright Act requires that an applicant seeking copyright registration for an artistic work used in relation to goods or services must furnish a certificate from the Registrar of Trade Marks confirming that no identical or deceptively similar mark has been registered by another person.

The Bench further explained: “Read together and harmoniously, it is manifest that the applicant has to issue a statement that no trademark identical with or deceptively similar to such artistic work has been registered under the Act in the name of, or that no application has been made under that Act for such registration by any person other than the applicant. This, coupled with the mandate upon the Trade Marks Registry to issue a Certificate of identical nature, which is a necessary concomitant to fulfil the laudatory purpose of insertion of a proviso to Section 45 of the Act. Sub-rule (6) of Rule 70 of the Rules, 2013, necessitates such a declaration by the applicant and mandates the Certificate from the Trade Marks Registry.”

The Court held that this mechanism is intended to prevent the mischief of persons obtaining copyright protection for artistic works that replicate existing trademarked logos.

The Court further found that the Trade Marks Registry had failed to mention the petitioner’s prior TIGER mark in the search certificate relied upon by the respondent while applying for copyright registration. As a result, the Registrar of Copyrights did not have the opportunity to properly assess whether the impugned work was original or deceptively similar to an existing mark.

The Bench also noted that the respondent had made inconsistent declarations regarding the publication status of the artistic work. While the copyright application described the work as “unpublished,” the respondent had already filed a trademark application claiming prior use of the same mark.

According to the Court, these circumstances demonstrated that the adoption of the impugned artistic work was not bona fide and that the work itself was not original.

Conclusion

The Delhi High Court held that the copyright registration granted to the respondent in respect of the impugned artistic work could not be permitted to continue in the Register of Copyrights.

Accordingly, the Court directed the Registrar of Copyrights to remove the impugned artistic work from the Register of Copyrights and report compliance within four weeks.

The petition was accordingly disposed of along with all pending applications.

Cause Title: Heineken Asia Pacific Pte. Ltd. v. Vijay Keshav Wagh & Ors. (Neutral Citation: 2026:DHC:1932)

Appearances

Petitioner: Priya Adlakha and Urvi Nama, Advocates.

Respondents: Apoorva Sharma, Advocate, Sumit Nagpal, SPC with Kunal Khurana, Advocate.

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