Justice Jyoti Singh, Delhi High Court
“Start Line Of Copyright Registration Journey Was Incorrect”: Delhi High Court Cancels Gujarat Pesticides’ ‘ZOOOK’ Label Copyright
|The Court held that the Search Report was inaccurate and contrary to the Register of Trade Marks and thus, was enough to set aside the impugned copyright registration.
The Delhi High Court has cancelled a copyright registration granted in favour of Gujarat Pesticides for the artistic work and packaging label “ZOOOK”, holding that the registration process was vitiated by an inaccurate Trademark Search Certificate and non-compliance with mandatory procedural safeguards under the Copyright Act, 157 and the Rules.
Accordingly, the Bench allowed the petition filed by Fortune Marketing Private Limited, proprietor of the well-known ZOOOK trademark used for electronic products, and revoked copyright registration No. A-153061/2024. While setting aside the registration, the Court remarked that “the start line of the journey for copyright registration was unfortunately incorrect and the destination had to be wrong”.
Justice Jyoti Singh observed, “…Oblivious of the objections raised in the Examination-cum-Search Report citing Petitioner’s mark as conflicting for some strange reason, which Respondents No.2 and 3 have not been able to explain even today before this Court, Search Certificate was issued on 26.10.2023 stating that there was no registration of similar marks and this wrong certificate led to the grant of the impugned copyright registration certificate. It is thus clear that the start line of the journey for copyright registration was unfortunately incorrect and the destination had to be wrong. The Search Report is thus inaccurate and contrary to the Register of Trade Marks and this is enough to set aside the impugned copyright registration”.
Advocate Nageshwar Kumhar appeared for the petitioner and Nidhi Raman, CGSC appeared for the respondent.
In the matter, Fortune Marketing had argued that it had adopted and registered the coined mark ZOOOK in 2013 and also possessed copyright registrations in its logo. It contended that Gujarat Pesticides had repeatedly sought trademark protection for marks incorporating ZOOOK, but those applications were either withdrawn or remained embroiled in opposition proceedings initiated by the petitioner before the Trade Marks Registry.
It was after Gujarat Pesticides secured copyright registration for a packaging label prominently displaying the word ZOOOK, the dispute began. Fortune Marketing challenged the registration, alleging that it was granted on the basis of an erroneous Trademark Search Certificate issued under Section 45 of the Copyright Act, 1957.
The Court on the statutory framework, noted that Section 45 requires a certificate from the Registrar of Trade Marks confirming that no identical or deceptively similar trademark is registered or pending in another person's name when an artistic work is used or capable of being used in relation to goods or services. The purpose of the provision, the Court observed, is to prevent parties from bypassing trademark law through copyright registration of labels and packaging.
The Court found that an Examination-cum-Search Report issued by the Trade Marks Registry in March 2023 had specifically identified the petitioner’s registered ZOOOK marks as conflicting marks.
However, a subsequent Search Certificate issued in October 2023 incorrectly stated that no similar marks existed. Holding that the certificate was contrary to the Trade Marks Register, the Bench observed that the flawed certificate formed the very foundation of the copyright registration.
“…being the registered owner and prior user and prior adopter of the ZOOOK marks, Petitioner has a real and tangible interest in the registered work, which evidently subsumes Petitioner’s registered mark ZOOOK. In light of this, Petitioner is also right that Respondent No.1 ought to have notified the Petitioner under Rule 70(9) of 2013 Rules as the Petitioner does have an interest in the subject matter and this requirement becomes even more pronounced in the present case since Respondent No.1 was fully aware that Petitioner was disputing its very claim over the mark ZOOOK and one opposition had succeeded and two are pending. Non-compliance of Rule 70(9) undermines the procedural integrity of the process and makes the copyright registration vulnerable…”, the Bench observed.
Accordingly, the Court cancelled the copyright registration, set aside the Search Certificate, and directed the authorities to reconsider the application afresh from the stage of the Examination-cum-Search Report after granting both parties an opportunity of hearing. The exercise has been directed to be completed within four months.
Cause Title: Fortune Marketing Pvt. Ltd. v. Gujarat Pesticides & Ors.(Neutral Citation:2026:DHC:4850)
Appearances:
Petitioner: Nageshwar Kumhar, Siddharth Yadav, Ayush Dey, Anmol Pandey and Nitin Yadav, Advocates.
Respondents: Vinay P. Tripathi, Nilesh Nayak, B. Shravanth Shanker and Preeti Shukla, Nidhi Raman, CGSC, Om Ram and Nikita Singh, Advocates.
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