Japan Tobacco Inc & Anr. vs The Central Wearhouse & Anr.

Adumbrating the background facts Mr. Kalra, learned counsel stated that in 1988, the petitioner no.2 granted a license to M/s.Dornbusch GmbH and Co. GmbH and Seidensticker Group of Companies, Germany, to manufacture and sell clothing articles under various ‘CAMEL’ artwork/trademarks. He stated that the said license granted the licensee a right to outsource manufacturing without any territorial restriction in pursuance whereof M/s. Dornbusch GmbH and Co. GmbH outsourced manufacturing of garments to M/s. Gokaldas Exports/Gokaldas Exports Limited, which is a sister concern of respondent no.1 in 1992. He would submit that respondent no.1 commenced manufacturing and selling garments under ‘CAMEL’ artwork/trademarks by copying the trademark of petitioner identically without any authorisation.

He further stated that the respondent no.1 falsely and maliciously and without any legal right or lawful authorisation got the ‘CAMEL’ artworks/trademarks registered as a copyright. It is this registration as a copyright that has been challenged by the petitioner in these proceedings.

At the outset, in order to support and substantiate the right of the petitioner to challenge and assail the registration of the copyright in the ‘CAMEL’ artwork by the respondent no.1, learned counsel relied upon the International Copyright Order 1991 as also 1999. He would contend that by virtue of the aforesaid Copyright Order, to which India too is a ratifying party, the publication of the artwork in any other convention country is sufficient to enforce copyrights in India.

He further contended that provisions of Section 40 of the Act has to be necessarily read in conjunction with and construed to be in consonance with the International Copyright Order iterations since 1958 including the future amendments. The proviso to Section 40 of the Act and the International Copyright Order 1999 stipulate that the Act applies to artworks made or published in any of the Berne Convention countries like Brazil, Norway and China, as if they were made or published in India. He would contend that predicated on the aforesaid International Copyright Orders read with Section 40 of the Act, entitles the petitioners to seek rectification/removal of the registration of the impugned copyrighted work, wrongly registered in the name of respondent no.1.

While arguing on merits, learned counsel handed over the Bench a comparison table establishing a clear imitations of the registered trademarks of the petitioner in India as well as other foreign jurisdictions, which have been illegally and unauthorisedly copied by the respondent no.1 and got the same registered as a copyright. From the comparison table, learned counsel sought to demonstrate the identical artworks of the registered trademarks of the petitioner in India as also in other foreign jurisdiction and that of the registered copyright of the respondent no.1.

In the aforesaid context, learned counsel contended that respondent no.1 demonstrably is not an ‘Author’ as defined under Section 2(d)(iii) of the Act as the impugned artwork lacks originality. By placing on record the comparison table handed over the Bench, learned counsel urged that the impugned registration is a mere superimposition of the various ‘CAMEL’ artworks/trademarks of the petitioner. According to him, this amply demonstrates that the impugned registration lacks originality under Section 13 of the Act.

Learned counsel further contended that respondent no.1 did not follow Rule 16(3) of the Copyright Rules, 1958. That apart, he contended that the mandatory Clearance Certificate under Section 45(1) of the Act was neither issued by respondent no.2 nor obtained by respondent no.1.

Mr. Kalra would contend that the alleged date of first publication of the impugned copyright in the year 1992 as claimed in Form-9 actually enures to the benefit of the petitioner for the reason that M/s. Gokaldas Exports/Gokaldas Exports Limited commenced manufacture of garments for export under agreement with M/s. Dornbusch GmbH and Co. GmbH in the same year under the trademark ‘CAMEL’. Thus, according to him, the unauthorised claim of alleged first publication of the artwork ‘CAMEL’ as purported by respondent no.1 corresponding with the commencement of exports under the same trademark, is too much of coincidence to be true.

On law, Mr. Kalra would urge that the lack of originality in the artistic work sought to be registered is the touchstone in a rectification petition. In other words, he argued that if the artwork sought to be registered has already been registered as a trademark prior to the date of first publication as purported, it can be construed that the said artwork lacks originality. He relied on the judgement of this Court Marico Ltd. vs. Mrs.Jagit Kaur, reported in 2018 SCC OnLine Del 8488.

Referring to para (xv) of the petition, Mr. Kalra contends that to the allegations made therein by the petitioner disclosing that M/s. Gokaldas Exports/Gokaldas Exports Limited were clearly in the knowledge of the said registered trademarks of the petitioner in India as well as foreign jurisdictions as also regarding the existence of M/s. Dornbusch GmbH and Co. GmbH which had outsourced manufacturing to the said M/s. Gokaldas Exports/Gokaldas Exports Limited under the ‘CAMEL’ trademark, the same work was admitted by the respondent in the counter affidavit filed by respondent no.1. He would contend that this admission itself would be sufficient to rectify the copyright register and remove the registration granted to the respondent no.1.

In order to reiterate and reaffirm the aforesaid contention, learned counsel also referred to the written statement filed by respondent no.1 in CS(COMM) 644/2018 titled ‘Japan Tobacco vs. D. Jhamnadas’, particularly the contents of para 13 and para 29 thereof, containing categorical admission by respondent no.1. In order to substantiate that the false claim of first publication of the artistic work ‘CAMEL’ in the year 1992 by respondent no.1, learned counsel referred to a number of documents annexed like Letter dated 26.03.2003, the Memorandum of Association of M/s. Gokaldas Exports/Gokaldas Exports Limited, the Article of Association of the said firm, the Trademark License Agreement executed between Worldwide Brands Inc. which is the owner of ‘CAMEL’ trademark and M/s. Dornbusch GmbH and Co. GmbH. These documents, according to learned counsel, would clearly indicate that the respondent no.1 had complete knowledge that the copyright sought to be registered by it was not an original artistic work.

Referring to the application for registration of the copyright by respondent no.1, he would submit that the said application though was dated 22.10.1997, however, claimed the first publication of the alleged artistic work in the year 1992. He brought attention particularly to the applicant i.e. Ms. Veena R. Hinduja. Placing reliance on the Memorandum of Association and Association of Articles of M/s. Gokaldas Exports/Gokaldas Exports Limited, learned counsel demonstrated that Ms. Veena R. Hinduja was also a Director/Partner and shareholder to the extent of ten lakhs shares in the said company. He contended that once it is admitted that M/s. Gokaldas Exports Limited/Gokaldas Exports, which is a sister concern of respondent no.1, was already manufacturing garments under the trademark ‘CAMEL’ for M/s. Dornbusch GmbH and Co. GmbH, it cannot be said that Ms. Veena R. Hinduja did not have the knowledge of the CAMEL trademark of the petitioner. Once such knowledge is attributable to Ms. Veena R. Hinduja, the question of the registered copyright being an original artistic work sought to be registered in the year 1997, does not arise.

That apart, learned counsel would contend that, alongwith the reply, respondent no.1 has failed to file any document or proof to indicate or establish who, how, where and when the artistic work was conceived and executed. According to him, establishing such a fact is a sine qua non for demonstrating originality in the artistic work for it to be registered under the Copyright Act. There being none, the impugned registration has to be revoked and the Register of Copyrights be rectified.

Learned counsel stoutly contended that nothing has been placed on record to demonstrate that the provisions of Section 45(1) of the Act have ever been complied with. In the absence of such compliance, the registration of copyright granted to respondent no.1 cannot be sustained. He referred to Rule 70(a) of the Copyright Rules, 2013, which are pari materia to Rule 16(3) of the erstwhile Copyright Rules, 1958, to submit that no notice as required under the said Rule was ever issued or received by the petitioner rendering such copyright registrations unsustainable. In view thereof, he would contend that the copyright registration of the alleged artistic work wrongly remains on the Register of Copyrights.

Learned counsel relied on the following judgements to substantiate his contentions:

Manju Singal Proprietor Singla Food Products vs. Deepak Kumar and Anr., 2023 SCC OnLineDel 5503;

Hugo Boss Trademark Management Gmbh and Co. Kg vs. Sandeep Arora Trading As Arras The Boss and Ors., 2023 SCC OnLine Del 79;

Triloki Nath Gupta vs Durga Prasad Gupta (2004) 29 PTC 759.

At the outset, Mr. Singh, learned counsel for the respondent no.1 refutes the submissions of the petitioner. He would submit that respondent no.1 is a rightful proprietor of the copyright in the ‘CAMEL COLLECTION’ label registered under the Act in the year 1997 however was first published in 1992. That apart, it is stated that respondent no.1 is also the proprietor of various registered trademarks of CAMEL, device of ‘CAMEL ‘and ‘CAMEL COLLECTION’. It is further stated that the trademark registrations have been in use since 01.01.1992. It is stated that all the registrations have been annexed with the reply which would demonstrate that the original artistic work in the impugned copyrighted work belongs to the respondent no.1.

In order to substantiate that not only did the respondent no.1 have various registrations including ‘CAMEL COLLECTION’ from the year 1992 onwards but also had got the copyright registration of the original artistic work in the copyright. Learned counsel also referred to sale invoices, advertisements of its products in the newspapers and journals across India from last many years. Learned counsel submitted that the respondent no.1 supplied readymade garments outside India through its sister concerns M/s. Gokaldas Exports/Gokaldas Exports Limited under the trademark ‘CAMEL’. Learned counsel submitted that the petitioner’s mark ‘CAMEL’ was registered in Class 34 for cigarettes and tobacco, and that too as ‘proposed to be used’. In that context, he referred to application no.1107218 dated 27.05.2002, indicating the user claim as ‘proposed to be used’. He contended that the said application in any case was withdrawn by the petitioner. While the registration obtained by the respondent no.1 for the mark ‘CAMEL COLLECTION’ is registered in Class 24. Besides, the respondent no.1 has other registrations for word/device marks like ‘CAMEL COLLECTION’, ‘CAMEL’, ‘CAMEL Trophy’ that too in Class 24 for readymade garments, footwear and headgear claiming user since 01.01.1992.

So far as the letter dated 26.03.2003, upon which reliance is placed by the petitioner to demonstrate admission on the part of respondent no.1, he would contend that the said letter is only a fair disclosure by M/s. Gokaldas Exports/Gokaldas Exports Limited. However, this was issued long after the interim injunction order was passed. Thus, according to him, the contents of the said letter cannot be construed to be an admission of facts by the respondent no.1.

Relying on the sales invoices and the advertisements which commenced on and from the year 1996, learned counsel would submit that the respondent no.l, after registration of the trademarks, had openly used the same for the purpose of manufacture and sale of garments throughout India uninterruptedly. In fact, according to learned counsel, the respondent no.1 was exporting garments manufactured by it under the same trademark ‘CAMEL COLLECTION’. He also would submit that the respondent no.1 on account of sale in manufacture of high quality garments under the trademark ‘CAMEL COLLECTION’ had garnered substantial reputation and goodwill over the years.

Learned counsel next argued that the petitioner has concealed material facts from this Court. In that the trademark registration of the petitioner bearing no.1170218 in Class 34 was filed on a ‘proposed to be used’ basis as on the date of application i.e. 27.05.2002. This claim was subsequently withdrawn by the petitioner pursuant to an opposition filed by a third party claiming prior user. He would also assert that petitioner’s mark ‘CAMEL’ bearing No. 119568 in Class 34 is presently under rectification.

Mr. Singh, learned counsel had also vehemently contended that the petitioner has relied upon international registrations which purely pertained to tobacco goods like cigarettes in Class 34, while not placing on record any proof to demonstrate that it has made any sale of a readymade garment in India under its alleged trademark ‘CAMEL’ or ‘CAMEL COLLECTION’. In such a situation, he would contend that the petitioner cannot rely on the trademark registrations as there is no transborder territoriality principle available in the context of trademarks. Thus, the substratum of the petitioner’s case, based on such principle, ought to fail.

So far as the reliance of the petitioner on a purported Licence Deed of M/s. Dornbusch GmbH and Co., conferring international rights in its favour for the purposes of outsourcing manufacture of goods being in the knowledge of respondent no.1 is concerned, it was contended that the said licence placed on record does not show any licence for manufacture of readymade garments in India.

Learned counsel contended that the adoption and use of the label ‘CAMEL COLLECTION’ in the year 1992, was honest and bona fide, and the priority had been upheld by Judicial Authorities.

Another relevant aspect according to the learned counsel was that the petitioner had exited the Indian market even in respect of tobacco as early as in the month of November, 2011, which was much before the present petition was filed. In support of the said contention, learned counsel relied upon the Newspaper publications filed alongwith the list of documents annexed alongwith the counter affidavit filed on behalf of respondent no.1. In other words, learned counsel would argue that having regard to the fact that the petitioner has not done any sale of garments under the mark ‘CAMEL COLLECTION’ in India; coupled with the fact that the trademark registrations were on ‘proposed to be used’ basis, however, withdrawn on account of opposition; read with the fact that the petitioner had exited Indian market in the year 2011 and before the present petition was filed, the present petition itself is unsustainable in law and ought to be dismissed.

So far as the conception of the original artistic work in the label/design by M/s. Gokaldas Exports/Gokaldas Exports Limited is concerned, there is no documentary proof available with the respondent no.1. However, according to learned counsel, what is relevant to be considered by this Court is as to whether petitioner is a ‘person aggrieved’ within the meaning contained in Section 50 of the Act. As per Mr. Singh, learned counsel, having regard to the aforesaid factual matrix, the petitioner has no locus to maintain the present petition seeking rectification of Register under Section 50 as the necessary ingredients for the petitioner to qualify as a ‘person aggrieved’ are completely missing. In that, the petitioner is neither a proprietor of any trademark ‘CAMEL’ or ‘CAMEL COLLECTION’ in India nor has any copyright registration of any device or label of ‘CAMEL’ or ‘CAMEL COLLECTION’ in India. Thus, according to learned counsel, the petitioner appears to be a stranger who cannot have any entitlement to file or pursue the present petition, which ought to be dismissed.

Learned counsel had laboriously referred to cross-examination of petitioner’s witnesses in the suit bearing CS(COMM) 644/2018 titled ‘Japan Tobacco vs. D. Jhamnadas’ which was tagged with the present petition to submit that the petitioners, who are plaintiffs therein, were unable to satisfactorily answer the questions put to them on behalf of the respondent no.1. According to learned counsel, the responses elicited demonstrate that the witnesses were either evasive or did not have any knowledge with respect to relevant facts with which they were confronted. As an example learned counsel stated that in a question as to whether plaintiffs were manufacturing and marketing readymade garments in India under the trademark ‘CAMEL’, the response of the witness was that he would need to check for any authorised manufacture but did confirm that the plaintiffs were not manufacturing goods bearing the ‘CAMEL’ mark in respect of clothing at present. The witness also answered in the negative on the question as to whether the petitioner was importing any readymade garments. Similar was the negative response in respect of the question relating whether the petitioner had ever advertised readymade garments under the trademark ‘CAMEL’ in India. So much so, that the witness confirmed that there were no sales of readymade garments bearing the trademark ‘CAMEL’ in duty free shops in India.

From the aforesaid small portion of the cross-examination, learned counsel stated that admittedly the petitioners never manufactured any readymade garments in India, nor did they import any such goods in India nor did they sell such goods in duty free shops and lastly never carried out any advertisement in respect of the mark ‘CAMEL’ in India. Additionally, learned counsel submitted that the licence placed on record of M/s. Dornbusch GmbH and Co was not for manufacture of readymade garments for sale in India under the trademark ‘CAMEL’ nor any such document has been filed by the petitioner. In such circumstances, learned counsel contended that there is neither basis nor any documentary evidence in favour of the petitioner to seek rectification of the Register of Copyrights of the impugned mark and as such the petition ought to be dismissed with heavy costs.

So far as the evidence of the respondent no.1’s witnesses appearing as defendant witnesses in the accompanying suit is concerned, learned counsel invited attention to particular questions relating to the conception of original artistic work involved in the impugned copyright to submit that, the witnesses did give an explanation which was sustainable in law having regard to the lapse of time from the time the original artistic work was conceived in the year 1992 to the time when the petition was filed in the year 2012. Referring to such responses of the witnesses, learned counsel would emphasise that the witnesses had indeed explained that the Company M/s. Gokaldas Exports/Gokaldas Exports Limited had its own designing department where a few designers and artists were employed and the said original artistic work was designed in the internal department of M/s. Gokaldas Exports/Gokaldas Exports Limited. Learned counsel contended that it is now judicially accepted that on account of long lapse of time the witnesses cannot be expected to remember or recollect smaller or finer details and as long as they are able to sustain and satisfactorily respond, the same ought to be taken to be true and correct. So far as questions relating to documents with respondent no.1 are concerned, learned counsel emphasised that since the business was sold to an entity called Blackstone of US in the year 2008 itself, it was but obvious that the witness would be unable to produce any such document.

Thus, in the aforesaid context of the evidence of the witnesses of both parties, learned counsel would emphasise that the petitioners have not been able to establish any proof of the respondent having imitated their trademark registration under the mark CAMEL or CAMEL COLLECTION and on the contrary the witnesses of the respondent no.1 have been able to satisfactorily sustain not only the conception of the original artistic work in the impugned copyright but were also able to sustain the fact that such conception was in the internal department of the M/s. Gokaldas Exports/Gokaldas Exports Limited. This part of the evidence is unimpeachable inasmuch as nothing to the contrary has been placed on record or proved by the petitioner as a plaintiff in rebuttal. In view of the aforesaid overwhelming and unimpeachable evidence, the present petition has no legs to stand and ought to be dismissed with costs.

Learned counsel for the respondent would also submit that the order dated 28.01.2005 passed by the Registrar of Trade Marks, Chennai, inter se, the parties, was affirmed by the Intellectual Property Appeallate Board (IPAB) vide its order dated 15.03.2006 and further affirmed by the Madras High Court vide its order dated 10.12.2008. It was submitted that the petitioner’s appeal before the Supreme Court is pending adjudication and no stay has been granted till date. Learned counsel relied on the following judgements:

‘Toyota Jidosha Kabushiki Kaisha vs. Tech Square Engineering Pvt. Ltd. & Anr.’, in C.O. (COMM.IPD-TM) 298/2022, by this Court, decided on 03.02.2023;

‘Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd. & Ors.’, in Civil Appeal Nos.5375-5377 of 2017, by Supreme Court of India, decided on 14.12.2012.

Mr.Kalra, learned counsel for the petitioner states that the arguments in the context of limitation of transborder territoriality principle is applicable only in the contexts of trademarks and not violation of the copyrights. Reiterating his submissions, learned counsel would submit that so far as copyrights are concerned, the International Copyright Order 1999 is clearly applicable as India is a convention country to the Berne Convention. He would submit that in any case the respondent has categorically admitted to having knowledge of the licence Deed executed by World Wide Brands Inc. in favour of M/s. Dornbusch GmbH and Co. GmbH. and the fact that M/s. Gokaldas Exports/Gokaldas Exports Limited/Gokaldas Exports Limited were manufacturing and exporting under permission of M/s.Dornbusch GmbH and Co. GmbH readymade garments under the mark ‘CAMEL’. In such circumstances, according to learned counsel, the respondent no.1 to whom M/s. Gokaldas Exports/Gokaldas Exports Limited was admittedly a sister concern, cannot contend to the contrary.

So far as the conception and creation of the original artistic work in the mark ‘CAMEL’ is concerned, learned counsel stated that the said mark ‘CAMEL’ represented in a distinctive stylised manner alongwith CAMEL as a device mark for blended cigarettes falling in Class 34 was conceived as far back in the year 1913 by RJR. He would submit that on 12.07.1916, RJ.R filed a declaration of ownership

trademark of ‘ ’ with the Registrar of Assurances in India. Thereafter, a further declaration that the said trademark has been in use in British India since 1921 was submitted on 15.11.1926 by RJR On 27.02.1946, R.J.R applied for registration of the trademark of ‘CAMEL’ as a label in Class 34 in India and is stated to be renewed from time to time. He submitted that sometime in late 1970s, World Wide Brands/petitioner no.2 was incorporated as a subsidiary of RJR. He stated that subsequently by transfer/assignment, RJRI assigned to the World Wide Brands/petitioner no.2 its registrations in respect of non-tobacco products in Class 25 for the trademark ‘CAMEL’ and its variants. It is in this context that learned counsel would contend that the alleged conception of the impugned copyright in the year 1992 is false and cannot be sustained in law.

Learned counsel for the petitioner further vehemently asserted that the reliance placed by respondent no.1 on sales invoices, advertisements, alleged goodwill and reputation is wholly irrelevant and extraneous to the present proceedings, which are confined to rectification of the impugned copyrighted work from the Register of Copyrights. It is contended that copyright and trademark operate in distinct and independent statutory domains, and the parameters applicable to trademark law, including goodwill, reputation and market presence, have no bearing on determination of copyright ownership and originality. It is further contended that the petitioner’s exit from the Indian market, arguendo, does not and cannot efface, extinguish or affect its subsisting, valid and enforceable copyright in the original artistic work, which continues to enjoy protection under the Act. It is also contended that the trademark opposition proceedings pending adjudication before the Supreme Court are wholly irrelevant and immaterial for the adjudication of the present copyright rectification petition, which is founded on the salutary principle of safeguarding and protecting original creative works from piracy and unauthorized reproduction.