Copyright Trademark

Trademark Clearances for Copyright?


I’ve always wondered at the logic of a rather bizarre provision under the Indian copyright act.

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.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

23 comments.

  1. AvatarRAHUL JAIN

    Well I totally agree with your view but with some proviso which I have identified while practicing and experience at the Trademark Registry and Copyright Office ?

    1. Copyright law amendment has recently being identified which make this NOC (in respect of artistic works capable of being used as trademarks) process more strict because this trademark angle has been identified for service marks as well which is earlier for goods marks only. [Form IV – S.no. 13A]. This amendment is in the process we need to check whether it has been enforced or not.

    2. Probably such no objection has been laid down so that we must not have multiple proprietors / users of the artistic mark as copyright users and as trademark users. In the litigation if multiple owners exist with certificates of TM & C then justice would only be delayed.

    3.For me such provision shall not stay because :-
    a. NOC from trademark registry cost Rs. 5000/- (expedited is 5 times) i.e TM-60, wherein the copyright application [Form IV] only cost Rs.400. The incentive which has been given in the form of less fee has been taken away by such NOC which is a costly affair.

    Rahul Jain
    Ex Examiner Trademark Registry, New Delhi
    Manager Legal Havells India Ltd

    Reply
  2. Avatarmnbvcxzaq1

    1. well, any particular policy reflects the prevailing mindset/thinking/jurisprudence at the time of its framing. so, many a times, judging some piece of legislative provision as right or wrong at some another point of time should be avoided. coz often such provisions have become merely anachronistic.
    2. having said that, i feel that in the present case, the raison d etre of this provision lies in its utility as a litigation-avoider. whether this litigation-avoidance function has outlived its utility in the present time or not, that is merely a matter of subjective assessment of an individual, whose take on the issue will vary, depending upon his/her ‘position’ (i am a strong believer in the gramscian concept of ‘war of positions’, which many may consider anachronistic, i admit).
    -aditya kant

    Reply
  3. AvatarSantosh Singh

    Very good observation Shamnad. However, what i think is that since, there is no proviso/system in place to carry out searches about the originality of a copyright work before the registration, a due care has been taken u/s 45 of the Copyright Act to avoid any litigation. Since, it was not possible in any other form of copyright work (literary work/musical work etc) it was made only for artistic work which is also a subject matter of trademark registration/protection.

    Well as you rightly said if there is an infringement the proprietor of such trademark (artistic work) can and will definitely go before a Court of Law seeking remedies against infringement, however, such a prior search/check through (TM-60) may save the proposed copyright applicant from such litigation.

    I believe it is not a bad provision under the Copyright and Trademark Law to avoid such litigation and conflict.

    Reply
  4. AvatarShamnad Basheer

    Dear Rahul:

    Thanks for your insightful views and for sharing the disproportionate costs associated with such searches.

    Aditya and Santosh: can’t we simply expect the artistic creator to search the TM database and check for conflicts? after all, no creator would like to infringe an IP right, particularly if it means that they would be restrained after adoption and usage and put to heavy losses. we now have a TM database that can be easily checked from the convenience of your home computer. why burden the TM office unnecessarily with this additional charge then? and why provide more scope for unethical “extraction” by unscrupulous officials? let me again reiterate the registration procedure under the copyright act is a mere formality. and burdening this merely formal procedure by insisting on a no objection certificate from another IP regime does not seem to make much sense to me.

    Reply
  5. AvatarSonali

    I agree with the comments here that the objective behind Section 45 of the Copyright Act is to avoid litigations and other conflicts.

    But it is also true that since the registration procedure under the Copyright Act is a mere formality, it really does’nt make such sense to go through a formal procedure of obtaining no-objection certificate from another IP department.

    Also, the problem that happens when we approach the Trade Marks Registry to obtain an NOC is that it can get very time taking, thus delaying the whole process of filing the copyright application.

    However, we also cannot expect every creator of an artistic work to have a moral responsibility to respect others’ creations and as such conduct a search of the trademark database on his own to avoid any infringement.

    What about having a provision under the Copyright Act which mandates copyright owner of every artistic work (capable of being used as a trademark) to rather conduct a search at the Trade Marks Registry and file the copyright application along with a certified copy of the search reports. The Copyright Board can thereafter raise objections if they feel that any trademark is similar or confusingly similar to the artistic work. This will save a lot of time.

    Also, thinking aloud…. what about a situation where the copyright owner of the artistic work had created the work several years before the trademark (pending or registered) was put into use? Then how would someone deal with a situation like this? This is irrespective of whether Section 45 remains as it is or stands amended.

    Sonali Dey

    Reply
  6. AvatarK. MUTHU SELVAM

    Dear Shamnad,

    Similar to No Objection Certificate from TM Registry for registration of artistic work under copyright Act, there is another linking provision between Registrar of Companies and Trade marks registry. Under rule 32 of Trade marks act, one has to file Form 11 for issuance of a certificate pursuant to clause (ii) of sub-section (2) of section 20 of the Companies Act, 1956 to the effect that no trade mark identical with or deceptively similar to the name of the company is respect of which the request is made has been registered as trade mark or is pending under the TM Act, 1999.

    One more linking provision between Trade Marks Registry and Plant protection authority is also available in Protection of Plant Varieties and Farmers’ Rights Act, 2001. Section 17(4) of PPVFR Act says that “Notwithstanding anything contained in the TM Act, 1999, a denomination assigned to a variety shall not be registered as trade mark under that Act”. But, there is no related or enabling provision in Trade Marks Act, 1999. Even the TM Manual also does not speak anything about the issue. During our training programme for examiners of trade marks held in Mumbai last year, I took it to the notice of Mr. Kurien and he suddenly assigned this task to Mr. Ravi to look into.

    Here the interesting thing is no Plant Variety applicant is asked by Plant Authority for getting no objection certificate from TM registry before his/her denomination gets registered in Plant Authority. There is no enabling provision in Trade Marks Act with respect to section 17(4) of PPVFR Act, 2001.

    After discussing with one Examiner of Plant Variety about the reason behind the section 17(4) of PPVFR Act, 2001, I understood that a new variety is registered only after it meets the scientific requirements of Novelty, Distinctiveness, Uniformity and Stability and its registration validity period is limited unlike the registration requirement and validity period of trade mark.

    I totally agree with your view on unwanted provision of getting NOC from TM registry for copyright registration.
    K.Muthu Selvam
    Formerly Examiner of Trade Marks

    Reply
  7. AvatarAnonymous

    hi all,

    This was a long debated topic. We had several discussions on this .
    But irony is that NOC is still required if the artistic work is CAPABLE OF BEING USED IN RESPECT OF GOODS. If it is used for services NOC is not required.

    Reply
  8. AvatarShamnad Basheer

    Dear Sonali:

    You really want the copyright board to step in here? have you assessed their performance on legal issues so far? we have plenty of articles on the blog pointing to issues with the copyright board. if you meant the copyright office, you need to think through whether or not a mere formal registering authority can be tasked with determining whether or not something is likely to infringe a trademark. I’d rather leave this to the TM office (if it all it has to be done) than to an office with no institutional or personnel competence in this regard. remember the evaluation is one that hinges on the intricacies of Trademark law, not copyright law.

    Reply
  9. AvatarShamnad Basheer

    Dear Muthu Selvam,

    Thanks much for sharing this information–I had no idea, particularly re: the linkages with plant varieties. very interesting….starting with the drug patent linkage fiasco, most linkages appear problematic..let me review the other linkages and get back to you. Thanks again

    Reply
  10. AvatarAnonymous

    Why dont we merge the Copyright office with the office of the CGPDTM and GI and consolidate all effective IP under one roof. The problem will be over. Other wise also the Trademark Office is proposing to do away with the official search procedure and bringing all searches to public domain. Thus keeping Section 45 requiement doesnt make ense at all. In any case it is only Indian works that are rgistrable under Copyright Act and not the foreign works, leading to a very few application that to for formal evidentiary value. Keeping and running a seperate office for such trivial activitity makes no sense what to say of Section 45 requirement

    Reply
  11. AvatarB P K

    Your Article of Section 45 of the Copyright Act, 1957 makes interesting reading at the same time I bag to disagree with your views for the following reasons;

    It is an undisputed proposition that such registration of Copyright is not a ‘conclusive proof’ of copyrightability of the literary/artistic work being registered. I feel that Section 45 of the Copyright Act, 1957 is an indirect admission of and tries to correct the inbuilt loopholes in the mechanism provided under the Copyright Act for registration of artistic work under the same. As you are aware, to secure registration of an artistic work under the Copyright Act, 1957 one has to make a simple application on the prescribed form along with the prescribed fee. Perhaps, the only significant requirements which distinguishes the registration of artistic work from that of literary work is that in case of the former, one has to give details of the artistic who created the artistic work and take no objection from such artist that (if such artist is different from the actual Applicant).
    Though the registrar may hold inquiry ‘as he may deem fit’ [Section 45(2)] and check the correctness of application for its particulars or on the basis of objections received [Rule – 16(4)& (5)], there is know other procedure laid down as to ‘what is the process of such inquiry which is FIT for everyone’.

    CONTD…

    Reply
  12. AvatarB P K

    CONTDD..

    On the other hand, under the relevant provisions of the Trade Marks Act, 1999 read with the Trade Marks Rules, 2002 before the trade mark label/logo (which is in the nature of the artistic work) can be registered, it has to undergo various formal suggestions such as examination report, compliance with objections if any, advertisements and finally registration. Unfortunately, there is no such detailed mechanism provided under the Copyright Act. As a result, if there was no requirement as that envisaged under Section 45 of the Copyright Act, probably, there can be a scenario where two different persons secured protection for the same, similar artistic work under two different statutes for example if a Mr. A applies for registration for copyright in respect its artistic work on 1st January, 2011 and Mr. B also applied for registration of the same/similar artistic work under the Trade Marks Act, 1999 in the absence of Section 45 of the Copyright Act 1957 what matter is that both the aforesaid competent authorities may end up issuing registration services of two different people resulting in dichotomy.
    Agreeing to what Sonali said, one cannot expect all authors to show the moral responsibility of checking the TM registry beforehand irrespective of their intension or creation. A refusal to registration of copyright, due to failure to present such NOC, according to my understanding, should be deemed the ‘artistic work’ as uncopyrightable.
    One of the basic principle of IP Law particularly trade mark law is that their shall be one source and one proprietor for every mark if your argument was to be accepted, the absence of the mechanism provided under Section 45 would actually hinder the said principle. Hence, agreeing with Santosh, for me, such provisions are indeed required for dismissing any frivolous copyright registration thereby removing the scope of dispute or litigation in future.
    I look forward to your valuable response.

    Prashant!
    (with inputs from Adv. A. Kane)

    Reply
  13. AvatarShamnad Basheer

    Anon:

    Excellent suggestion to merge the functions of the copyright office (registry functions) with the Indian PTO. It will spur a political turf war…but from a policy perspective, will make a lot of sense.

    Reply
  14. AvatarShamnad Basheer

    prashant and sonali (assuming you’re not the same person):

    no question of “moral” imperative here to check TM database. rather, just plain common sense. if you don’t check, you run the risk of infringing and you could be restrained. I think thats a big enough threat for someone to check, particularly when the database is now easily available, no?

    Reply
  15. AvatarShamnad Basheer

    Dear Prashant and Sonali:

    Another query that I had for you. You speak of the need to reduce litigation. I assume that a number of artistic works are simply not registered at the copyright office (I think this is a reaosonable assumption to make). Which means that they haven’t got the necessary TM no objection clearances. And yet I don’t see a whole lot of TM infringement actions where the object of concern is an artistic work that appropriates a registered TM. Can you point me to any such litigations or numbers..so that we can empirically test out whether or not the lack of a no objection TM route will necessarily result in more litigation.

    Reply
  16. AvatarAnonymous

    It may have potential for political war but today four leading copyright industries namely software (business or otherwise), publishing (online or offline), entertainment (film, music), or copyrighted brands have much more to do with the Ministry of Commerce and Industry, its various departments and policies than with the Ministry of HRD. I doubt these inductry representatives ever even think of meeting with HRD official. Some even dont take their invitations seriously. Whereas a call for Ministry of Commerce & industry would always be welcome and you may find these industry representative often moving in the corridors of Udyog Bhawan.

    So consolidation makes sense from the policy as well as administration perspective.

    Reply
  17. AvatarB P K

    Dear Shamnad Sir,

    I understand that any argument made should be substantiated with facts and figures and castles on air are bound to be discarded. I may not be able to produce the real number of cases/litigations which have been instituted for failure of such registration or for that matter, any situation, which was actually avoided due to such refusal of registration..

    But I can sure bring to your notice about an ongoing case I saw in Bombay HC a couple of days back (though the arguments are being heard and decision pending) where trademark and copyright infringement was claimed by the plaintiff against the defendents in respect of their ‘word mark’and ‘artistic label’ respectively, where the defendents argued that though they have not registered the ‘artistic label’ in front of Registrar of Copyright but it was approved by the State Excise Authorities (which was required due to the kind of the product it was), I feel that it can very well be said in such case that if an application at all would have been made in front of Registrar u/s 45 and according to the facts of above case, there would have been good chances that the NOC would not have been obtained from the TM office, then, in that case, probably, if not the litigation could have been avoided completely (due to presence of some other issues too), but atleast the case would have become weaker for the defedents for sure.

    A mere non application of any particular provision for any period of time should not be the reason for repealing it. Reiterating, for me, such procedure is very much required to fill the otherwise ambiguous procedure of grant of registration which is till now limited to the inquiry ‘WHICH DEEMS TO BE FIT’ by the registrar.

    Reply
  18. AvatarSneha

    Dear Shamnad,

    While I do agree with you that considering the easy accessibility of the trade mark database, common sense should compel applicants for copyright registration of artistic work capable of being used on goods to conduct TM searches prior to any such application; it appears that obtaining an NOC under s.45(1) proviso is cheaper as compared to conducting TM searches.

    The cost of conducting a TM search is Rs.500/- per class. There are 34 classes of goods which means an expense of more than Rs. 15000/- to conduct the search. Bearing this in mind, a cost of Rs.5000/- for a search under s.45(1) proviso appears to be cheaper.

    Reply
  19. AvatarShamnad Basheer

    @BPK: Thanks for referencing the case. Can you please provide more details on this case? If its interesting, we’d like to blog it here.

    Secondly, I’m still not sure why we need to retain the NOC scheme under section 45. There are two possible scenarios:

    i) A person who uses an artistic work is completely unaware of its trademark status
    ii) A person who uses such work is aware of the TM but still wishes to go ahead and use. Perhaps the person thinks that the TM owner will not sue or that he/she doesn’t infringe (as per current legal standards) or that the TM regt is not valid.

    As you can appreciate the NOC scheme under section 45(1) really does not help with situation number (ii) outlined above. Even after a person is refused a NOC for an artistic work (owing to the presence of a registered TM covering teh mark), he/she can still decide to use teh artistic work on goods. The copyright act merely prohibits the registration of the artistic work. It does not prohibit the use of the artistic work, IN fact, the copyright act registration is not even conferring any special validity on teh work–as registration is a mere formality and no substantive rights flow from the registration.

    As for situation (i) i.e lack of knowledge by the artistic work owner, can’t we merely have them attest in an affidavit or form that they have searched the TM database and don’t believe that they infringe any registered TM’s. In a month or so, the IPO confirms that this database will be freely accessible online.

    Someone suggested something similar in one of the comments, but they wanted the artistic work owner to also submit results of the search. And then for the copyright authorities to examine the search results and deny registration upon finding a conflict. Which is even worse than the present NOC scheme, since under the proposed scheme, a copyright authority with no experience of ascertaining the validity of trademarks is assessing for conflict.

    One of the following solutions can be adopted:

    i) to insist on a declaration from the artistic work owner that they have searched and found no conflict
    ii) If we want the burden to be a bit more onerous, we also state that along with the above declaration, they have to submit print outs of all searches of TM’s done by them. However, once this is submitted, the copyright authority cannot sit in judgment over whether or not the print outs demonstrate a conflict with a registered TM.

    They have to rely on the assertion by the artistic work owner that it does not conflict. However, assuming the copyright owner lies (which I guess will take this situation directly to situation number (ii) outlined above), and the matter goes to court, the court is always at liberty to read in bad faith adoption and factor this aspect into damages calculation and even the grant or non grant of injunction.

    Reply
  20. AvatarSonali

    I see a lot of debate on Section 45 of the C.R Act. Shamnad, I agree with what you pointed out on my comment, that the issue being more of infringement of trademark, the copyright office cannot be allowed to comment on the same. I was actually thinking more from the perspective of reducing the time consumed in this whole process. Honestly, that’s where we get stuck for a long time.

    BTW Shamnad:

    Sonali and Prashant are not the same person FYI 🙂 I am here again today after my last and only comment made a few days back on Dec 14.

    Regards,
    Sonali Dey

    Reply
  21. AvatarDevarajan Govindaswamy

    Author has raised a valid argument over the conflict. An absurd link between the TM NOC (FORM TM-60) and Copyright rights. In my perception and personal opinion, rather than complaining about any deficiency, deviation, validity of the specification of the Act, or the purpose of Search and Issuance Certificate. It would be apt to blame that the unnecessary NOC link may be understood wrongly, or misused in an ill manner by the community. Because, the only connection point between a Trademark and Copyright, is the use of Copyright for the purpose Goods identification.
    As such, on the aspect of different trademark types, the LABEL type trademarks are more suitable and purposeful for obtaining a copyright on the basis of a registered trademark. But not just the logo, which is mostly without any artistic work, that neither requires an artistic work. Since, a LABEL could have a realistic application of an artistic work, packaging design for the purpose of goods identification, and I suppose, it is supposed to be meant for that…
    However, the question remains. When a registered TM ensures intellectual property right, do we still need a Copyright?
    As I have contented, the legal fraternity may be using it in a different conception, may be a short cut for the passing off COA. This may be the culprit, a mere TM search report and too much of reliance over it, and this may be the reason for the non-sens(e)ical NOC.
    Otherwise, I totally agree with the comments of the learned professionals above over the validity of the TM > NOC > COPYRIGHT.

    Reply

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