Case Note & Summary
The dispute concerned copyright registration for artistic work and package designs used in tea trading. The petitioner, a proprietary concern, obtained copyright registration No.A-87508/2009 on 18.11.2009 under Class 30 of the Copyright Act, 1957 for the name 'Tiger No.5'. The first respondent subsequently obtained registration No.A-88737/2010 on 30.08.2010 for 'Lion No.5'. The first respondent claimed prior use since 1976 and filed a rectification application under Section 50 of the Copyright Act, 1957 before the Intellectual Properties Appellate Board (IPAB), Chennai. The IPAB, by order dated 31.12.2020 in TP/26/2020/CR/WZ, allowed the application and expunged the petitioner's registration on the ground that the petitioner had not complied with the mandatory requirement of Rule 16(3) of the Copyright Rules, 1958, analogous to Rule 70(9) of the Copyright Rules, 2013, which requires notice to persons having interest in the subject matter of the copyright. The petitioner challenged this order in a writ petition under Articles 226 and 227 of the Constitution. The petitioner contended that the IPAB had passed the order ex parte without hearing, that the petitioner's registration was earlier in time and it had no reason to know the first respondent's interest, that the rectification application was filed beyond the 90-day limitation, and that the petitioner's acquittal in a criminal case for copyright infringement was not considered. The first respondent maintained that the petitioner was aware of the first respondent's interest because a FIR had been lodged on 28.10.2007, a civil suit had been decreed, and the first appeal dismissed, thus notice under Rule 16(3) was imperative. The High Court first held that the writ petition was maintainable even though the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 had abolished IPAB, because the impugned order was passed before the ordinance and the High Court was the only remedy. On merits, the court found that the petitioner had constructive knowledge of the first respondent's interest from the 2007 FIR and subsequent litigation, and had admittedly not served any notice under Rule 16(3). The court held the provision mandatory and its non-compliance sufficient to expunge the registration. Regarding natural justice, applying Dharampal Satyapal Ltd. v. Deputy Commissioner of Central Excise and Ors., (2015) 8 SCC 519, the court ruled that even if a hearing was denied, no prejudice was caused because the petitioner's non-compliance was undisputed and a hearing would not have changed the outcome. The court also noted that the first respondent's use since 1976 and the civil court decree reinforced the need for notice. Consequently, the High Court dismissed the writ petition with no order as to costs.
Headnote
A) Copyright Law - Registration Procedure - Mandatory Notice to Interested Persons - Copyright Rules, 1958, Rule 16(3); Copyright Rules, 2013, Rule 70(9) - The petitioner obtained copyright registration for 'Tiger No.5' without serving notice on respondent No.1 who had prior interest and had filed an FIR in 2007 and a civil suit. The IPAB expunged the registration holding non-compliance with mandatory Rule 16(3). The High Court upheld that the provision is mandatory and non-compliance is sufficient ground to expunge registration where the petitioner had constructive knowledge of the respondent's interest from the 2007 FIR and subsequent litigation. Held that IPAB correctly allowed the rectification application. (Paras 11-13) B) Constitutional Law - Principles of Natural Justice - Ex Parte Order and Prejudice - Constitution of India, Articles 226, 227 - The petitioner argued the IPAB passed an ex parte order without hearing. The High Court relied on Dharampal Satyapal Ltd. v. Deputy Commissioner of Central Excise and Ors., (2015) 8 SCC 519, holding that every violation of natural justice does not render the order null and void; the test is prejudice. Since the petitioner admittedly did not comply with Rule 16(3), a hearing would not have changed the outcome and no prejudice was caused. Held that the impugned order was not vitiated by denial of personal hearing. (Paras 14-15) C) Copyright Law - Writ Maintainability - Abolition of IPAB - Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021; Copyright Act, 1957, Section 50 - The respondent argued that the writ petition was not maintainable because the IPAB had been replaced by the High Court under Section 50. The High Court held that since the impugned order was passed before the ordinance came into force, the High Court was the only remedy available to challenge it. Held that the writ petition was maintainable. (Para 10)
Issue of Consideration
Whether the IPAB order expunging the petitioner's copyright registration was vitiated by non-compliance with principles of natural justice and overlooking of facts; whether mandatory Rule 16(3) of Copyright Rules, 1958 was breached; whether the writ petition was maintainable after abolition of IPAB by the Tribunals Reforms Ordinance, 2021
Final Decision
The High Court dismissed the writ petition, finding no merit. The IPAB's order expunging the petitioner's copyright registration was upheld. No order as to costs.
Law Points
- Copyright registration under Copyright Act 1957 requires mandatory notice to interested persons under Rule 16(3) Copyright Rules 1958
- non-compliance is sufficient ground to expunge registration
- violation of natural justice does not invalidate order unless prejudice shown
- writ petition under Articles 226 and 227 maintainable to challenge IPAB order passed before abolition of IPAB by Tribunals Reforms Ordinance 2021
