Section 45 relates to artistic works that have the potential to double up as trademarks. It states that prior to registering any of such works under the Copyrights Act, one must obtain a “no-objection” certificate from the Trademarks registry. The section reads as under:
“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,to the effect that no trademark 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.”
Firstly, if at all the creation of an artistic work infringes upon the trademark rights of a person, that person is free to sue the artistic creator in a court of law. And this is possible even if the said artistic work is not registered as a copyright. For, as most students of elementary copyright appreciate, the set of rights commonly associated with a copyrighted work come into existence upon the creation of that work and do not depend for their validity upon any registration process. The entire process for the registration of a copyright is a mere formality and may, at best, offer an evidentiary advantage at the time of suing a third party for infringement. But the registration cannot, by itself, help prove that the work is copyrightable or that one owns title to the work.
If a copyright certificate is a mere formality and confers no substantial “right” on the piece of work, why insist on a no-objection from another IP regime ( I speak of the trademarks act here)?
Further, given that many copyrighted artistic works are unlikely to be registered, what purpose does the “no objection” certificate serve? And lastly, it bears noting that even despite the registration of a copyrighted work, a trademark owner is still free to sue the copyright holder, if she apprehends that the said copyright infringes her trademark.
This entire process appears nonsensical to me, with no other purpose than that of increasing the work-load of the trademarks registry. Needless to add, it also ends up providing “extraction” fodder for the many unscrupulous trademark officials who milk those that are desperate to obtain quick “no objection” certificates.
I personally don’t see any logic behind this provision. But in the classic words of Justice Holmes: “the life of the law has not been logic, it has been experience.” If there are any experienced practitioners out there who can point to convincing reasons as to why this provision ought to stay, I’m more than happy to stand corrected.