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M J Antony: Intellectually challenged

SC tackles two tricky issues on trade mark and copyright laws

M J Antony  |  New Delhi 

The Supreme Court tackles two tricky issues on trade mark and copyright laws.

While the law on intellectual property rights is expanding fast with the passage of several legislation and international conventions, some of the old questions regarding trade marks and copyrights are still waiting for clear interpretation. The time taken by courts to decide such issues is also unreasonable. It might take more than two decades to travel half way in a trade mark case, as was shown by a recent Supreme Court judgement in Thukral Mechanical Works vs PM Diesel (P) Ltd. The suit was filed in the Delhi High Court in 1985 and now the Supreme Court has sent it to the Intellectual Property Appellate Board, after deciding certain legal issues arising in the dispute over a trade mark coveted by three firms.

The problem itself was one of 19th century vintage which the law-makers thought was extinct. When the Trade Marks Act 1958 was amended in 1999, the phrase “trafficking in trade mark” was dropped. The Act had not defined the word “trafficking”. It was left to the courts to explain it. In simple terms, trafficking means dealing in trade marks as a commodity by itself. A firm registers a trade mark for a product or a class of products without the intention to use it, but allows someone else to use one or more of them for a consideration.

In a 1986 case (“American Home Products”), the Supreme Court said such act of a person was “merely to make money by selling to others the right to use the trade mark.” It is used as a money-grubbing device to extract payment from subsequent persons interested in the trade mark. The Madras High Court, in 1990, said that such registration is done “with the sole object of licensing it to others without any bona fide intention to use the mark by the registered proprietor himself.”

The practice was quite common. The old Act provided that “no application for registration shall be entertained unless the agreement between the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks.” However, this clause was thought to be unnecessary by the law-makers and, therefore, dropped in 1999. The proprietor of the trade mark was supposed to exercise diligence and control over the manner in which the trade mark was being used. But the problem has not gone away and resurfaces in different fact scenarios.

The Supreme Court, while remitting the Thukral dispute over the trade mark “Field Marshal” to the board for decision on facts, laid down certain broad principles. It said: “Whether the registered proprietor of the trade mark had taken recourse to trafficking or not must be determined in an appropriate proceeding. The principle of ‘purchaser of property has a duty to make enquiries’, therefore, cannot apply in a case of this nature. So long as the right to assign a registered trade mark remains valid, once the same is validly assigned, the assignee derives the same right as that of the assignor in terms of the law.”

Another judgement of the Supreme Court delivered in recent weeks dealt with an interesting question on copyright law (Academy of General Education vs B Malini Mallya). Late Kota Shivarama Karanth, a many-sided genius, evolved a new form of ballet as director of the academy. In his will, he vested the copyright in his works to Malini Mallya, who looked after him in his old age. The ballet was staged in Delhi in 2001 as a tribute to him. She objected to it as a violation of her copyright and demanded compensation from the academy.

The question arose as to the status of the ballet — was it a “literary work” because it could be read as dramatic literature (like plays of Shakespeare) or a “dramatic work”?

The answer seems to be difficult. The Act gives examples of literary work, which includes compilations and computer databases. “Performer” includes actors, singers and snake charmers. But when literature and performance converge in the same work, the position is not so clear.

The Karnataka High Court felt that dramatic works are a form of literature. According to it, “dramatic works also could contain in it passages of great literary taste… Neither the literary work nor the dramatic work can be produced without the imaginative skill of the author.” The Supreme Court held otherwise — that there was a distinction between the two according to the Act. Copyright in respect of performance of a ballet would not come within the purview of a literary work.

The impact of this interpretation is not clear at the moment, and it would take a more complex egg-or-chicken case to explain the law further. Ultimately, the Supreme Court cut the Gordian knot in this case by allowing the academy to stage the ballet under certain conditions mentioned in the Act itself: that is, before its students, staff and parents; performance by amateur clubs before a non-paying audience, or for the benefit of a religious institution.

First Published: Wed, March 04 2009. 00:46 IST