• Is copyright certificate without Trademarks office NOC (Sec. 45) valid to protect product packaging?

A company has filed FIR and criminal copyright infrigement case against me due to similarity in product package design. He does not have trademark registered. Only copyright of package wrapper design is there. Even the copyright certificate does not have noc/clearance from trademark office. The headings in copyright certificate that says:
"14. If the work is 'Artistic work' which is used or capable of being used in relation to any goods or services, the application should include a certification from the Register of Trade Marks in terms of provision to Sub-Section(i) of section 45 of the Copyright Act, 1957" 
is marked N.A.. 
Is the copyright certificate even valid as he has not shown his intent during copyright registration. Can he use it for filing copyright infrigement case. Please provide a ruling if he cannot use the copyright certificate. Can he use it for protecting his product packaing without a NOC clearance from Trade Marks office. Can I continue selling the product with similar product package design. None of us have Trademark. Opposite party has applied for Trademark but not granted possibly due to generic place name in brand.
Asked 3 months ago in Intellectual Property

First answer received in 10 minutes.

Lawyers are available now to answer your questions.

6 Answers

Even if he doesn't have a copyright or a trademark certificate then too he can file a case against you if the trademark design or the logo or the packaging is similar.


If he has applied for it but was refused the refusal order should be shared in order to understand the reasons for refusal. 

Moreover even if it isn't registered then too a case can be made out and filed in the civil court.

Rahul Mishra
Advocate, Lucknow
12649 Answers
31 Consultations

5.0 on 5.0

Dear Sir,

Copyright and trademark are different things and have different provisions and these attract cases under different provisions of law.  

Ganesh Singh
Advocate, New Delhi
6616 Answers
14 Consultations

4.5 on 5.0

Trademark and copyright should be obtained. But that doesn't mean that a person cannot sue you if his copyright or trademark is not registered or is in the process of being registered.

S.45 uses the word MAY.

But it is advisable to become a registered owner of the copyright for various reasons as a registration establishes a public record and a motice to the whole world.

 

Rahul Mishra
Advocate, Lucknow
12649 Answers
31 Consultations

5.0 on 5.0

What he had done is immaterial, if the same is not maintainable then the authorities would not have entertained his complaint nor the court would accept his non-maintainable complaint which may not be legally valid in the given situation. 

If you have not been restricted by an order of court to sell your product, you may proceed without bothering to his threats of false case 

T Kalaiselvan
Advocate, Vellore
72756 Answers
1110 Consultations

5.0 on 5.0

Section 45 in the Copyright Act, 1957

45. Entries in register of Copyrights.—

(1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights: 1[Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that 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.]

(2) On receipt of an application in respect of any work under sub-section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.

 

 

It is not mandatory to register the work to claim copyright and it commences the moment the work is created. However, it is advised to register the work for better protection, it will serve as proof in a matter of dispute. 

 

Section 51 of the Copyright Act specifies when a copyright is infringed. According to Section 51 of the Act, Copyright is deemed to be infringed if:

  • A person without obtaining the permission of the copyright holder does any act which only the copyright holder is authorised to do.
  • A person permits the place to be used for communication, selling, distribution or exhibition of an infringing work unless he was not aware or has no reason to believe that such permission will result in the violation of copyright.
  • A person imports infringing copies of a work
  • A person without obtaining the authority from the copyright holder reproduces his work in any form.

Section 55(1) of the copyright act, provides that the copyright holder is entitled to remedy by way of injunction. The injunction is the most effective remedy in case of copyright infringement.

  • The copyright holder can take criminal proceedings against the infringer. The criminal remedy is not an alternative to the civil remedy but is complementary to it. Thus, the copyright holder can bring both civil and criminal proceedings simultaneously. 
  • Section 63 of the Copyright Act, states that copyright infringement is a criminal offence.

However, there are certain exceptions to the copyright infringement i.e. in certain cases a person is not required to obtain the permission of the copyright holder to use his work. However, it is always advised to produce the original work and not to use someone’s copyrighted work without permission.

 

T Kalaiselvan
Advocate, Vellore
72756 Answers
1110 Consultations

5.0 on 5.0

Dear Sir/Ma'am

Sec 45 of Copyright act is related to formalities to be undertaken on registration of a copyright. If the copyright of the company is already registered, that means that they have the right to file an infringement complaint. And it is also the case that registration of copyright is not mandatory as the registration is treated as mere recordal of a fact. The registration does not create or confer any new right and is not a prerequisite for initiating action against infringement.

Sir the provision of requirement of NOC clearance is only in regard to artistic work that can also be registered also as trademarks to check if there is already a trademark that exists and is similar to such copyright. Though on issuance of NOC the copyright owner can have copyright which is separate from the trade mark owners right to his trade mark.

Thank you

  • For more assistance, you can book a consultation with me.
  • If you like my answer, please give a good rating and leave a review

 

Anik Miu
Advocate, Bangalore
1516 Answers
18 Consultations

5.0 on 5.0

Ask a Lawyer

Get legal answers from lawyers in 1 hour. It's quick, easy, and anonymous!
  Ask a lawyer