What does a copyright originality inquiry into a label as an artistic work have to do with a similarity inquiry under trademark law? This is a question that does not often invite consideration in Indian law. This owes much to the flexibility of Indian intellectual property law in permitting Claimants to bring composite actions.
Put the two up into antagonism with each other, however, and some fascinating legal combinations arise. The Delhi High Court’s ruling last Friday in Marico v. Kaur presently one such instance.
The Cancellation Claim
The question before Ms Justice Singh was of the validity of a 2003 copyright registration held by the Respondent. Could this copyright over a product label for ‘NIHAL’ used on hair oil products be cancelled under Marico’s allegation that it was an imitation of its ‘NIHAR’ label?
The power to rectify the Copyright Register is formally provided for under Section 50 of India’s Copyright Act. It is to this provision that Ms Justice Singh first turns, suggesting, at the outset, that an imitation label would justify the exercise of copyright rectification powers as “an entry wrongly made in, or remaining on, the Copyright Register” under Section 50(a).
The comparison closest at hand here is the one with trademark law, and it is a sharp one. India’s Trade Marks Act hives off cancellation actions into two broad categories: non-use and errors in registration. It is clear from Ms Justice Singh’s framing that this case for copyright cancellation invites a comparison with the latter type.
However, trademark law, fortified by robust legal tests for deceptive similarity, rarely opens these inquiries at cancellation. (It helps, of course, that actions grounded prior use claim preference to those over a trademark registration, in the event of a conflict.) The situation that the judge is confronted with, therefore, is a meaningful and unique one: the application of a similarity inquiry to cancel a copyright under the guise of a formal error in registration.
The Comparison and the Parle Products Trademark Inquiry
The Court commences with a comparison of the labels that constructed along the same lines as a trademark similarity inquiry. In fact, so similar is the inquiry that the primary reference is not to copyright case law but to the 1972 Supreme Court decision in Parle Products. “Though [Parle Products] has been rendered in the context of comparison of label marks in a passing off action,” says Ms Justice Singh, “the tests for comparison of labels which are artistic works, would be the same.”
This is a significant endorsement. It means, in order, that a copyright cancellation inquiry of this nature requires and justifies:
(i) that there be a comparison of broad and essential features of the original label and the imitation label;
(ii) that the comparison should not involve a side-by-side comparison of the labels; and
(iii) that the comparison should budget for ordinary people glossing over the smaller details of the labels owing to the limitations of imperfect recall.
However, the co-option of the trademark law stops here.
The similarity inquiry in a copyright cancellation, per Ms Justice Singh, need not take into account the class of products the labels were applied to, the etymology story informing the adoption of the labels or, indeed, a full inquiry into the likelihood of confusion. This is because the question at copyright cancellation is limited to whether the artistic work is not original, and if it deserves to be cancelled as an error in the Register for this reason.
However, despite confirming in as many words that the only relevant inquiry is a comparison between the artistic works for similarity, there are numerous other elements of the case that enter the field of vision here. These include the Respondent’s mala fides; material that demonstrated that Marico the Petitioner was the prior user from a trademark standpoint; proof of the availability of Marico’s artistic work on products sold in the market which would have offered access to the Respondent in fashioning its own label, and the Respondent’s shaky and unsuccessful attempts to register trademarks under the ‘NIHAL’ name.
Though it does add equitable legs to the finding against the Respondent’s copyright registration in this case, this is unnecessary. It serves only to distract from the significance of the adoption of the Parle Products similarity inquiry in copyright cancellation cases. It is a distraction that needs to be avoided, too, since the application of this inquiry here turns on a fine point.
Ms Justice Singh rules, after a consideration of the broadly similar elements of the two labels, that the Respondent’s registered label is substantially similar to Marico’s. This, of course, is the bedrock of the Indian copyright infringement standard, and one that is applied across categories of works.
Overlaying Parle Products onto the Copyright Similarity Inquiry
It is useful here to overlay the Parle Products Supreme Court’s guidance on the similarity inquiry. The first stage of the inquiry — into the broad and essential features of the rival labels — is easily passed. (Comprehensively so, in fact, aided by the judge’s clear and uncomplicated comparison discussion.)
The second stage of the inquiry demands that a restraint on comparing the labels side-by-side. This is not so easily done if the yardstick is one of substantial similarity. Copyright infringement in this framing often turns on the volume and degree of copying involved. This comparison — if not with artistic works in all cases, then certainly with literary works and works of that nature — will inevitably involve assessing the rival works side-by-side. There is no way around it. This element of the Parle Products Supreme Court is a bad fit for a copyright similarity inquiry.
The third stage endorsed by Parle Products requires the Court to divert attention from minutiae and adjust its comparison for imperfect recall. The difficulty with demanding this adjustment while comparing rival artistic works for copying lies in asking why this adjustment is necessary in the first place. This is a fair question to ask since Ms Justice Singh is clear that the overall effect of confusion need not be considered. If so, the lens that worn to aid in the assessment of the overall confusion ought to be similarly irrelevant in a copyright similarity inquiry. This requirement, too, fades for its lack of necessity.
What remains, therefore, is for a Court to assess whether the broad and essential features of the artistic works are substantially similar. This is a meaningful finding but one that is somewhat hamstrung by its rather constrained facts: a straightforward case of lack of originality, a registration clearly pre-dated by Marico’s use, and a lack of sustained opposition by the Respondent, who was set ex parte by this Court sitting in appeal of the Copyright Board’s decision in her favour.
As such, this decision offers confirmation of a conclusion that was in little doubt from the start. It does, however, also confirm that hammering a trademark similarity inquiry into copyright similarity shape may take a few more attempts to get right.
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