1. This is an application under Section 50 of the Copyright Act, 1957 for expunction of the registration of copyright entry No. A-49734/89 in artistic work category. The applicant Shri Trilokinath Gupta as stated in the application is engaged in the business of manufacturing and marketing of ayurvedic hair oil. His father late Shri Hari Mohan Lal Gupta was a medical practitioner. During his lifetime he created a number of products, one of which was ''Rogan Kalyan Tel''. This product was manufactured by Shri Hari Mohan Lal Gupta. He was being assisted by his two sons Shri Trilokinath Gupta, the applicant and Shri Durga Prasad Gupta, the respondent. The father during his lifetime in 1988 partitioned his property among the family members are executed a family settlement dated 25.12.1988. It is further stated in the plaint that the applicant was granted exclusive right to manufacture and sell ''Rogan Kalyan Tel''. He also got the trade mark relating to the product and the right to use ''Gopinath Rup Prasad Co.'' on the packings.
2. The non-applicant Shri Durga Prasad Gupta in June 1988 served a legal notice on the applicant in which it was stated that Shri Durga Prasad Gupta had obtained registration of copyright of the carton ''Rogan Kalyan Tel'' in his name after registering it as an artistic work No. A-48734/89 and asked the applicant to desist from using the artistic work. It is further stated in the application that the registration was obtained by making false statements and misleading claims and so the registration should be cancelled. The grounds taken in the plaint were-
(a) That the respondent is not the author of the impugned work because the impugned work was in continuous use by the father of the applicant since the year 1982 and that the work was created by the father of the applicant.
(b) The respondent is not the owner of the impugned work. The father Shri Hari Mohan Lal Gupta was the owner of the work and according to the family settlement of 1988 it came to the applicant as his share of the family property.
(c) The Copyright registration was obtained by fraud misrepresentation and concealment of material facts. The respondent made false statements as to ownership, authorship and publication of the impugned work.
(d) No notice was given to the applicant as is mandated by Rule 16 of the Copyright Rules, 1958.
(e) The registration was wrongly made and wrongly remains on the register of the Copyrights.
3. On the above grounds the applicant requested the Board to order expunction of the impugned registration. 4. The respondent was duly notified by the Registrar of the Copyrights regarding the application filed by Shri Trilokinath Gupta but the respondent submitted his written statement with annexures only on 20th September 2002 after a delay of more than two years. The Board accepted it for the sake of justice and ordered the respondent to pay as cost Rs. 1,500/- to the applicant. In the written statement Shri Durga Prasad Gupta admitted that both the applicant and the respondent were assisting their father in manufacturing and selling ''Rogal Kalyan Tel''. He maintained that the name Gopinath Rup Prasad Co. can be used by the respondent and his son and not by any other person including the present applicant. He contended that this was the result of the family settlement mentioned by the applicant. Para 5 of the application was not denied. Coming to the grounds in the application, the reply given was "para A of the said ground needs reply." At the time of argument it was stated that it should be read as "needs no reply." This means that the averments made in Para A were accepted by the Applicant.
5. Para B of the application was denied. It was stated that as a part of the family settlement "ownership was granted to the respondent for the benefits (sic) of said work." Accordingly it was stated "because the respondent was the owner therefore he obtained the registration of copyright ''Rogan Kalyan Tel'' in his name after he came to know about sub-standard supply and ill manufacture of products by petitioner against the interest of said product invented by his father" (sic).
6. Regarding para D it was stated that Rule 16 was not applicable.
7. Para E was denied and it was stated that the applicant is guilty of infringement of copyright after it had been registered in the name of the respondent.
8. The Board framed the following issues:
1. Whether Shri Had Mohan Lal Gupta was in his lifetime selling Rogan Kalyan Tel in the carton/label which is the subject of the disputed registration? If so, from what date?
2. Whether there was a family settlement by Shri Hari Mohan Lal Gupta and if so, what were the terms of the partition?
3. Whether the petitioner was granted exclusive right to use the label of Rogan Kalyan Tel?
4. Whether the provisions of Section 45 (proviso) were complied? If not, what is its effect?
5. Whether the registration was obtained by false and misleading statements and claims etc.?
6. Whether the impugned registration was wrongly made and wrongly remains in the Register?
7. What orders?
9. The matter was fixed for hearing on 20th April, 2004. On that date counsel for the respondent sought adjournment. After some discussion both the counsels agreed that the matter be fixed for 12th May 2004 at Delhi on which date it was heard. 10. Shri M. K. Miglani, counsel for the applicant submitted that entry in column No. 7 in the Register of Copyrights is false and has been admitted by the respondent to be so. Similarly he argued that the entries in column Nos. 8, 9 and 10 are also false. It was stated that in Para 2 of the plaint it was submitted that ''Rogan Kalyan Tel'' as well as the packing cartons were created by the father of the applicant and this was not denied by the respondent. It was submitted that the family settlement has been admitted by the respondent. Reading the family settlement which is dated January 1989 it was put forward that the family settlement took place on 25.12.1988 by an oral agreement and later a memorandum was prepared. This family settlement also refers an earlier partition that took place on 28th February 1988 and for which a memorandum was prepared on 1.6.1982. This contains a heading
This is followed by the following:-
This shows that the right to manufacture and sell ''Rogan Kalyan Tel'' alongwith the labels and packing being used in connection with the oil and the right to print Gopinath Rup Prasad Co. on it and to make use of the trade mark were given exclusively to Trilokinath Gupta, the applicant. The applicant put much stress on the point that the impugned work was being continuously used by his father since the year 1982 and that it was invented by his father and as per the terms of the family settlement the right to manufacture and sell ''Rogan Kalyan Tel'' and make use of the labels, trade mark etc. and the name Gopinath Rup Prasad Co. came to him exclusively under a family settlement to which the opposite party was a signatory. The applicant also relied on another document marked as A-7 purported to be written by his father Shri Hari Mohan Lal Gupta in which it was stated:
This document was executed on 26th February 1991.
11. Pointing to para 2 of the para-wise reply in the W.S. the advocate for the applicant submitted that the applicant has admitted the family settlement. According to him, para 3 of the W.S. admits family settlement. It was repeatedly pointed out that the averment that the father of the applicant had invented ''Rogan Kalyan Tel'' and created packing carton and label was not denied by the respondent. The case of the applicant was that in ground B the applicant had specifically stated that his father was the owner of the copyright in the impugned work which came to the applicant by way of family settlement. On this the respondent stated in Para 6 B of W.S. that "as per integral part of family settlement ownership was granted to respondent," Sub-para C below para 6 of the written statement contains the following: "Having ownership respondent obtained the said registration of copyright of "Rogan Kalyan Tel" in his name after he came to know about sub-standard supply and ill manufacture of products by petitioner against the interest of the said product invented by his father." Referring to page 2 of the family settlement, the advocate submitted that the right to manufacture and sell ''Rogan Kalyan Tel'' alongwith the label and carton packing, trade mark and the name Gopinath Rup Prasad Co. was given to the applicant exclusively. Referring to another document executed in 1991 by applicant''s father, it was argued that the allotment of ''Rogan Kalyan Tel'' and the right to use the label, packing etc. was conferred on the applicant. Pointing to the notice served by the respondent on the applicant, it was submitted that it has been admitted in Para (1) that their father had in his lifetime partitioned all his moveable and immovable property and given possession to every beneficiary his share of the property. Para 3 of the legal notice stated that Shri Durga Prasad Gupta had obtained registration of the impugned work before partition and that he was not manufacturing the oil and is in-lending to apply for cancellation of the licence for manufacturing the oil Referring to a document also purported to be family settlement and executed on 1.1.1989 which was signed by the respondent Durga Prasad Gupta it was submitted that vide para 2 of the document Trilokinath Gupta, the applicant was declared to be complete owner and authorized person to manufacture ''Rogan Kalyan Tel'', to use the name and labels and to print Gopinath Rup Prasad Co. and that, the other parties shall have no claim, right or property in it. 12. It was further submitted that there has been no compliance of Rule 16 of the Copyright Rules and such non-compliance vitiates the whole proceedings and renders the registration liable to be expunged.
13. Shri S.K. Bansal, Advocate for the respondent submitted that what is stated in the family settlement is allotment of trade mark ''Rogan Kalyan Tel'' to the applicant. The trade mark was given to the applicant but not the copyright in the artistic work and so according to him copyright in the artistic work in question is with the respondent. He further submitted that the application for grant of registration was made in 1987 and this artistic work was created in 1987 by the respondent. He further submitted that when the applicant stated that he got the work from his father and that the product was sold in "packing cartons/labels titled ''Rogan Kalyan Tel'', this according to the advocate, meant that many different types of labels were being used for the Tel and only one of them came to the applicant by way of the family settlement. Referring to para 1 of the reply to the legal-notice, the advocate contended that the applicant Trilokinath Gupta was not a signatory to any partition deed and there was no registered partition deed binding on him. Referring to para 3 of the reply to the notice, it was pointed out that the applicant himself has admitted that the trade mark to ''Rogan Kalyan Tel'' belongs to him. The main plank of the argument was that the trade mark and copyright are two different things and what came to the applicant as his share was the trade mark and that he cannot lay claim to the copyright in the artistic work.
14. After the advocate had concluded his argument, the Board drew attention to issue number 4. The advocate could not reply why the provisions of proviso to Section 45 were not complied. The learned advocate for the respondent was at pains to point out that the applicant has not clearly identified which artistic work is being challenged. He also was very emphatic that the family settlement produced by the respondent did not contain the signatures of the applicant but did not say that ''it was void. In fact it was produced by the Respondent.
15. The Board has carefully considered the pleadings as well as the statements of the learned advocates. We now intend to consider them in the light of each issue.
Issue No. 1: The applicant and the respondent both have agreed that their father Shri Hari Mohan Lal Gupta was in his lifetime selling ''Rogal Kalyan Tel''. The carton submitted by the applicant is identical to the carton which has been registered as an artistic work as registration No. A-49734/89 by the Registrar of Copyrights. It has also been accepted by both the parties that this was being used by their father since 1982. Hence, issue number 1 is to be answered this way. Shri Hari Mohan Lal Gupta was in his lifetime selling ''Rogal Kalyan Tel'' in the carton, which is the subject of the disputed registration, since 1982.
Issue Nos. 2 & 3: The applicant Shri Trilokinath Gupta has submitted a document purported to be a memorandum of the division of property according to family settlement. The respondent Shri Durga Prasad Gupta has submitted another document which he claims to be the memorandum of family settlement but both the documents are agreed on the point that the right to manufacture ''Rogal Kalyan Tel'', to use that name and to use the labels already in use in connection with that oil and the name of the firm Gopinath Rup Prasad Co. has come according to the family settlement to the share of the applicant Shri Trilokinath Gupta. The Board is not concerned with other terms of the family settlement and partition. Thus, it is established that the right to manufacture ''Rogal Kalyan Tel'' and to continue to use the labels and cartons alongwith the name of the firm devolved on the applicant Shri Trilokinath Gupta. The right was exclusive to Shri Trilokinath Gupta and no other family member had any interest in it.
Issue No. 4: The proviso of the Section 45 of the Copyright Act were inserted with effect from 9.8.1984 by Section 16 of the Act 23 of 1983. It would be useful to quote the provision:
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:
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. A plain reading of the proviso makes it apparent that this proviso is meant to be mandatory. The Legislature has advisedly used the expression "application shall include" ... "and shall be accompanied.'' This indicates that submission of the statement and the accompanying certificate is a condition precedent for entering particulars of a work in the Register of Copyrights. Admittedly the application was made in 1987 and the registration was made in 1989. There is no doubt that the proviso to Section 45 was in force on the date the application for registration was made. The Registrar ought to have properly examined the application and told the respondent Shri Durga Prasad Gupta that the application is incomplete because it does not comply with the proviso to Section 45. In the absence of compliance with the provisions of Section 45, the Registrar ought to have rejected the application and refused registration. Unfortunately, the application was not properly examined and considered. The Board had specifically put this question regarding compliance of Section 45 to the learned advocate for the respondent. He did not give any reply to that. He was also not sure what would be the effect of non-compliance of proviso of Section 45. The Board has attempted to find whether the expression "shall" makes the provision mandatory. The use of the word "shall" raises a presumption that the particular provision is imperative". (Shew Bux Mohata v. Tulsimanjari Dasi, AIR 1961 SC 1453). At the same time it has been laid down that "the world shall" is ordinarily mandatory but it is not so interpreted if the context or the intention otherwise demands". (Sainik Motors v. State of Rajasthan, AIR 1961 SC 1480.)
It would be appropriate at this stage to have a look at the context and setting of Section 45 (Proviso). The proviso was not a part of Section 45 of the Act when it came into force on 21st January 1958. Later it was found that some persons used to obtain a copyright registration of an existing trade mark belonging to some one else. After being armed with a registration as an artistic work they would issue legal notice to the trade mark user to desist from using it. The victim would have to face a prolonged legal action or would opt for a compromise. The Registrar of Copyright had no way of knowing whether the artistic work which is sought to be registered is an existing trade mark. In order to protect innocent persons from the onslaught of unscrupulous elements the Parliament came forward to suppress the mischief. It added this Proviso with effect from 9.8.1984. After that date if an applicant desires to get an artistic work registered and the artistic work is used or capable of being used in relation to goods then he has to fulfill two conditions:-
(a) the application shall include a statement to that effect, and
(b) it shall be accompanied by a certificate from the Registrar of Trade Marks that no trade mark identical with or deceptively similar to such artistic work has been registered.
If the word ''shall'' is construed as directory then the mischief which the Parliament wanted to be subdued and eliminated would continue and flourish. Hence, the only interpretation that is logical and rational is that this provision is mandatory and non-compliance would be fatal rendering the transaction void and nugatory. Thus, applying the Mischief Rule laid down in Heydon''s case (76 E.R. 637) the Board is certain that the Legislature intended the provision to be mandatory. Any other interpretation would strike at the root of the purpose of the amendment. It is a well known rule of construction that such interpretation should be adopted as suppresses the mischief and advances the remedy and brings to an end the evasions and misuse of a law. We have no doubt that ''shall'' used in the proviso to Section 45 makes the provision mandatory.
Non-compliance of the proviso would render the registration as wrongly made. As a result of this finding alone the entry deserves to be expunged.
Issues No. 5 & 6: The applicant for the registration Shri Durga Prasad Gupta knew it very well that ''Rogal Kalyan Tel'' was being manufactured by his father and under a family settlement has come to be manufactured by his brother Shri Trilokinath Gupta. It was also within his knowledge that Trilokinath Gupta has been given the right to make use of the trade mark and label and also the name of the firm which was being used by their father. Even so Shri Durga Prasad Gupta made an application for registration. In the notice that was served on behalf of Shri Durga Prasad Gupta on the applicant it was admitted that he had obtained a licence to manufacture ''Rogan Kalyan Tel'' before the partition and that he is taking steps to get the licence cancelled. In the written statement in sub-para C of para 6 the respondent stated that "respondent obtained the said registration of copyright of "Rogan Kalyan Tel" in his name after he came to know about sub-standard supply and ill manufacture of products by the petitioner against the interest of the said product invented by his father." This statement of the respondent is enough to show that he knew that his brother was manufacturing ''Rogan Kalyan Tel'' and that he had obtained copyright registration on the pretext that the oil manufactured by his father was of sub-standard quality. He also admits that the oil earlier manufactured was invented by his father. Thus, it is clear that the respondent Shri Durga Prasad Gupta had a clear knowledge that his brother Trilokinath Gupta has an interest in the subject-matter of the copyright. It would be beneficial here to quote Sub-rule (3) of Rule 16 of the Copyright Rules, 1958:
The person applying for registration shall give notice of his application to every person who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it.
Rule 16 is mandatory. A person who applies for registration is obliged to give notice of his application to every person who claims or has any interest in the subject-matter of the copyright. It is clear as the day that the manufacturer of ''Rogan Kalyan Tel'' which had the exclusive right to manufacture the oil was a party interested in the subject matter. The respondent cannot deny that he did not know that such an interest existed because the party happened to be his brother and the right devolved on the applicant Trilokinath Gupta by a family settlement which was produced before the Board by Shri Durga Prasad Gupta, the respondent. Hence, there has been a clear violation of Sub-rule (3) of Rule 16. This also would render the registration as wrongly made and liable to be expunged.
16. The statements which are given in the registration certificate are based on the application made by Shri Durga Prasad Gupta the respondent in this case. He has admitted in his written statement that ''Rogan Kalyan Tel'' was invented by his father and also that it was manufactured by his father in his lifetime and that the right to manufacture it came to Trilokinath Gupta through a family settlement. Even so he claimed in 1987 that he is the author of the work and the work is unpublished. Hence, the facts indicate that the registration was obtained by false statement and claims. This also makes it liable for expunction. 17. On the above premises and findings it is clear that the registration was obtained in violation of the provisions of Section 45 as well as Sub-rule (3) of Rule 16 and also by making false statements and claims. As a result, we direct the Registrar to rectify the Register of Copyrights by expunging Entry No. A-49734/89.
